Patent Trial and Appeal
`Case Tracking System
`
`Frequently Asked Question (FAQs)
`
`Version 2.0 October 7, 2022
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`PGR2023-00003
`Ex. 3001
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`Contents
`A. System availability and general information .................................................................... 6
`A1. Where can I access P-TACTS? ........................................................................................................................ 6
`A2. How do I log on to P-TACTS for the first time?....................................................................................... 6
`A3. What are the privileges and responsibilities for user role and type?.............................................. 6
`A4. How do I update my P-TACTS email address? ........................................................................................ 7
`A5. How do I transfer my docket to a new email address? ........................................................................ 7
`A6. If P-TACTS is down, may I file a petition or other documents via email or mail? ...................... 7
`A7. Will extensions of time be available? .......................................................................................................... 8
`A8. What is the megabyte limit for a document upload? ........................................................................... 8
`A9. Is there a limit to the number of documents that can be uploaded per filing? ......................... 9
`A10. Are there any naming conventions for documents or character restrictions?.......................... 9
`A11. Will the USPTO provide forms (e.g., power of attorney or IPR transmittal) for filing
`documents in a proceeding?.................................................................................................................................. 9
`A12. How can I check whether I filed a document properly? .................................................................... 9
`A13. If the wrong document is submitted, can it be deleted through the P-TACTS interface? . 10
`A15. Will Patent Center for the challenged patent show whether a petition has been filed or a
`decision on the petition has been granted? .................................................................................................. 10
`A16. Is there any application programming interface (API) access to PTAB?..................................... 11
`A17. Can I download information in bulk from P-TACTS?......................................................................... 11
`A18. How do I enter a foreign address in P-TACTS?.................................................................................... 11
`A19. If I am idle in P-TACTS for less than 25 minutes, what will happen? ........................................... 11
`A20. If I am idle in P-TACTS for 25 minutes or more, will I lose any of the completed document
`uploads from the timed-out session if I clicked on the “Add to list” or “Submit” button? ........... 11
`A21. If I am idle in P-TACTS for 25 minutes or more, will I lose any of the data entered during
`the timed-out session if I did not select Submit? ........................................................................................ 12
`A22. What will happen if I am idle for 25 minutes, how do I get back into my session?.............. 12
`A23. How many cases can I view on My docket? ......................................................................................... 12
`A24. How do I view the status of submitted motions or rehearing requests?.................................. 12
`A25. How do I file a Notice of Appeal? ............................................................................................................ 12
`B. Searching and reviewing documents .............................................................................. 12
`B1. Can I use P-TACTS to search for a proceeding without registering? ............................................ 12
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`B2. Can I search for an AIA Review by the patent owner? ........................................................................ 13
`B3. Will P-TACTS collect and report statistics on the proceedings? ..................................................... 13
`B4. Is full text document search available in P-TACTS? ............................................................................. 13
`C. Registering as a P-TACTS User ........................................................................................ 13
`C1. Who can register? ............................................................................................................................................. 13
`C2. What information is required to register? ............................................................................................... 13
`C3. How can I associate my USPTO registration number with my P-TACTS account? .................. 13
`D. Filing a petition ............................................................................................................... 13
`D1. When will my petition be accorded a filing date? ............................................................................... 13
`D2. Will the USPTO terminate the proceeding if I filed a complete petition that contains
`regulatory defects and failed to correct the defects within the time period set forth in the
`notice? .......................................................................................................................................................................... 14
`D3. How will the Board review petitions for statutory and regulatory compliance? ...................... 14
`D4. If the correspondence address of record for the subject patent or application is not up to
`date, can the petitioner serve the petition on the patent owner at a different address?............. 15
`D5. After I file a petition, how do I file a follow-on document (e.g., a motion to expunge)?...... 15
`D6. If a petition is incomplete, how much time do I get to complete it? ........................................... 15
`D7. Can I present claim charts and arguments in landscape orientation? ......................................... 15
`D8. Can a petitioner file mandatory notices in a separate document?................................................ 16
`D9. If I am filing two petitions challenging the same patent, should I use the same exhibit
`numbers in both cases? ......................................................................................................................................... 16
`D10. What are the most common errors found in petitions?.................................................................. 16
`D11. How do I submit additional documents along with a petition?................................................... 16
`D12. How long will an initiated petition be saved for future filing? ..................................................... 17
`D13. What if my exhibit has multiple parts? Can I manually edit the automatically generated
`exhibit number? ........................................................................................................................................................ 17
`D14. Can I enter any exhibit number when uploading an exhibit? ...................................................... 17
`D15. Are uploaded documents immediately available to parties of the AIA Review case or only
`after submission of the petition?........................................................................................................................ 17
`E. Fees .................................................................................................................................. 17
`E1. Can I pay the fees in P-TACTS using multiple forms of payment? ................................................. 17
`E2. Can I pay the fees using multiple credit/debit cards for one transaction?.................................. 17
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`E3. If I filed an incomplete petition with a payment of the appropriate fees and decided not to
`correct the petition, can I request a refund of the fees? ........................................................................... 17
`E4. If I paid the base petition fee for a petition that challenges 25 patent claims but failed to
`pay the excess claims fees upon filing, will the petition be accorded a filing date? ...................... 18
`E5. When the USPTO notifies me of a fee deficiency for excess claims, can I file a corrected
`petition without excess claims rather than paying the excess claims fees, so that the petition
`will be entitled to a filing date as of the original submission date? ..................................................... 18
`E6. Do I need to pay both the request fee and the post-institution fee when I file an IPR review
`petition? ....................................................................................................................................................................... 18
`E7. If I filed an IPR petition may I request a refund of the post-institution fee paid if the Board
`decides not to institute a review? ...................................................................................................................... 18
`E8. What payment system is P-TACTS connected to? ................................................................................ 18
`F. Submission of patent owner/respondent information and preliminary response .......... 19
`F1. How does a patent owner inform the Board that they want to participate in an AIA Review
`proceeding and provide mandatory notice information under § 42.8?............................................... 19
`F2. Will the USPTO check the patent owner’s real party in interest information and power of
`attorney against the assignment recorded in the USPTO?....................................................................... 19
`F3. How do I file a patent owner preliminary response in P-TACTS? ................................................... 19
`F4. How do I waive a patent owner preliminary response in P-TACTS? .............................................. 19
`F5. How does an attorney appear in a proceeding as back-up counsel after being recognized
`pro hac vice?...............................................................................................................................................................20
`F6. Can I utilize a non patent owner preliminary response paper type to file a patent owner
`preliminary response in P-TACTS? .....................................................................................................................20
`F7. What happens if I incorrectly file a patent owner preliminary response in P-TACTS using
`the document edit icon?........................................................................................................................................20
`G. Filing other documents ................................................................................................... 20
`G1. How do I file other documents (e.g., a motion to seal or proposed protective order)?........20
`G2. How do I file a confidential settlement agreement? ........................................................................... 21
`G3. How do I add additional counsel when there are multiple petitioners for the same
`proceeding? ................................................................................................................................................................ 21
`G4. What heading should I use on the first page of papers filed in a case?...................................... 21
`G5. What email addresses receive email notifications when something happens in a case? .....22
`G6. Does metadata remain in a file after it is uploaded to P-TACTS? ..................................................22
`G7. How do I receive notifications to a shared docketing email address? .........................................22
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`H. Derivation proceedings ................................................................................................... 22
`H1. How do I file a petition for a derivation proceeding in P-TACTS?.................................................22
`H2. What happens to a petition for a derivation proceeding after it is filed?...................................22
`H3. As a petitioner for a derivation proceeding, should I file my application in P-TACTS? .........22
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`A. System availability and general information
`A1. Where can I access P-TACTS?
`You can access P-TACTS here: https://ptacts.uspto.gov/ptacts/ui/home
`A2. How do I log on to P-TACTS for the first time?
`P-TACTS is only compatible with Google Chrome (version 91.0.4472.77 or higher) browser or
`Microsoft Edge (102.0.1245.39 and higher) browser. Other browsers, such as Firefox, are not
`supported. We highly encourage using Google Chrome as your browser. Additionally, display
`resolution settings at 1600px are recommended for optimal viewing of the search window and
`results table.
`To sign in, go to the www.uspto.gov website and create an account in MyUSPTO.
`
`
`
`1. Click on “MyUSPTO”
`2. Click on “Create a USPTO.gov account”
`
`Enter the required information in MyUSPTO.
`After your account has been successfully verified, access the PTAB P-TACTS system link and sign
`in with your same MyUSPTO account information. The next time you log into the P-TACTS
`system, you will be automatically logged in if you have previously logged into your MyUSPTO
`account.
`If cases are not displayed in your My docket interface, please contact the Patent Trial and Appeal
`Board (PTAB or Board) at 571-272-9797 or PTAB P-TACTS Admin (PTABP-
`TACTSAdmin@uspto.gov) and request a docket transfer for your MyUSPTO registered email
`address.
`A3. What are the privileges and responsibilities for user role and type?
`Any registered P-TACTS user account can be one of the four types of user roles for a particular
`AIA Trials Review case.
`
`
`1. Submitter role – Users can submit a petition or enter an appearance as a patent owner,
`and designate counsel within these processes for the associated AIA Review number.
`The Submitter user role is not a party to the AIA Review case unless designated as
`counsel or real party pro se.
`2. Lead Counsel – Users designated as Lead Counsel for an AIA Review case can view and
`submit documents, and add, delete, or make updates to the new Staff role.
`3. Backup Counsel – For a party to a PTAB Trial case, all counsel that are not Lead Counsel
`must be designated as Backup Counsel. There is no longer a separate role for a First
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`Backup Counsel. Users designated as Backup Counsel for an AIA Review case can view
`and submit documents but will NOT have the ability to add, delete, or make updates to
`the new Staff role.
`4. Staff role – This is a new role where users can view and submit documents for an AIA
`Review case where Lead Counsel has added the Staff role user. This role is only visible to
`the party who submitted the Staff role for the particular AIA Review case.
`
`
`A4. How do I update my P-TACTS email address?
`You must update your MyUSPTO email address. Once your new email address is verified, access
`the PTAB P-TACTS system link and sign in with your same MyUSPTO account information. The
`next time you log into the P-TACTS system, you will be automatically logged in if you have
`previously logged into your MyUSPTO account. To transfer your P-TACTS case docket or
`particular AIA Review cases, contact PTAB P-TACTS Admin (PTABP-TACTSAdmin@uspto.gov)
`and request a docket transfer for your MyUSPTO registered email address.
`A5. How do I transfer my docket to a new email address?
`You must update your MyUSPTO email address. Once your new email address is verified, access
`the PTAB P-TACTS system link and sign in with your same MyUSPTO account information. The
`next time you log into the P-TACTS system, you will be automatically logged in if you have
`previously logged into your MyUSPTO account. To transfer your P-TACTS case docket or
`particular AIA Review cases, contact PTAB P-TACTS Admin (PTABP-TACTSAdmin@uspto.gov)
`and request a docket transfer for your MyUSPTO registered email address.
`A6. If P-TACTS is down, may I file a petition or other documents via email or
`mail?
`Please call the Board at 571-272-9797 if you are unable to access the system. If P-TACTS is
`unavailable, parties may notify the Board of the service of petitions and/or other associated
`documents by email, copying opposing counsel, at Trials@uspto.gov. The email notification to
`the Board should NOT include attachments.
`Notification to the Board of petitions served via email must include:
`Name of point of contact
`Email address of point of contact
`Patent number to which the petition corresponds (or application number in the case of a
`derivation proceeding)
`Application number of the patent
`Petitioner's application number (in the case of a derivation proceeding)
`Number of claims challenged
`Type of trial proceeding
`Power of attorney
`Fee (e.g., a deposit account authorization)
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`In addition, if a petition or document is served on another party via email or other means, it
`must be followed by a later-filed motion requesting acceptance of the submission once P-TACTS
`is available. The petition or document will be accorded the date on the certificate of service as
`the identified filing date. 37 C.F.R. § 42.6(b).
`It is important to note that a petition will not be accorded a filing date unless it is accompanied
`by a payment of the appropriate fees (e.g., a deposit account authorization).
`Paper filing via overnight delivery is authorized only if both P-TACTS and the Board's email
`address (Trials@uspto.gov) are unavailable.
`The mailing address is:
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`For hand delivery or delivery via FEDEX, UPS, etc.:
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Madison Building (East)
`600 Dulany Street
`Alexandria, Virginia 22313
`
`
`A7. Will extensions of time be available?
`If P-TACTS is down during normal business hours, a party may contact the Board and request a
`one-day extension of time for due dates that are set by rule or orders of the Board. 37 C.F.R. §
`42.5(c)(2). In the unlikely event that an administrative patent judge is not available to rule on the
`extension, the Board may grant an extension the day after the paper is due. However, no
`extensions of time will be granted for any statutory time period.
`A8. What is the megabyte limit for a document upload?
`A single uploaded file may not exceed 25 megabytes in size.
`If you need to file a document that exceeds 25 megabytes, please follow the instructions below.
`You can reduce the file size by:
`Splitting a large file into multiple smaller files; and/or
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`Converting Microsoft Word documents into searchable PDF files, rather than printing
`documents and scanning them in as flat PDF files.
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`A9. Is there a limit to the number of documents that can be uploaded per
`filing?
`No. However, only certain document types are allowed to be uploaded during a specialized
`process. (i.e., Initiating a new petition or entering an appearance as patent owner/respondent)
`A10. Are there any naming conventions for documents or character
`restrictions?
`There are no special naming conventions for documents, but the number of characters is
`limited. Use the name that will appear in the docket listing. It should be simple and descriptive,
`such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." Document names must
`be 75 characters or less.
`A11. Will the USPTO provide forms (e.g., power of attorney or IPR
`transmittal) for filing documents in a proceeding?
`P-TACTS provides screens for the parties to enter certain information (e.g., lead and back-up
`counsel and real party in interest). However, the USPTO does not have forms beyond those P-
`TACTS fillable screens.
`A12. How can I check whether I filed a document properly?
`Without logging in, you may search for the AIA Review case number by using the Search P-
`TACTS tool and select the “View documents” button to see if your public documents were
`uploaded as you intended. Alternatively, for cases where the petition has already been
`submitted, locate your AIA Review Number from your case docket or through the Search P-
`TACTS tool and open Case Viewer to review all papers and exhibits within the documents listing.
`Or:
`
`1) When initiating a petition:
`Upload a paper in the proper format (i.e., PDF) and exhibits in one of the proper formats
`(e.g., pdf, video/mp4, video/x-m4v, etc.).
`Select the “Add to list” button.
`Your document will be displayed in the List of documents table with an upload date and
`timestamp when the document has been successfully uploaded to the Create New
`Petition Wizard. Note that these documents will not be filed until the petition has been
`successfully submitted.
`2) When returning to an initiated petition before petition submission:
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`AIA Review case number is accessible from the external user's My docket - Unsubmitted
`petitions tab with the option to select Continue in the Action column and view previously
`added document content and information, including date and timestamp of addition.
`Upon petition submission, user will receive an email Patent Review Petition Filing receipt.
`3) When filing an Initial Appearance as a Patent Owner/Respondent:
`The user that submitted the Initial PO Mandatory Notice will receive an email
`confirmation of a Patent Owner Mandatory Notice Submission. Once the PO Mandatory
`Notice has been approved, the case will be displayed on patent owner's docket in
`Pending AIA reviews tab, the All AIA reviews tab, and Case Viewer.
`4) When filing a document (other than Initial PO Mandatory Notice) after the petitions has
`been submitted and you are a party to the case:
`The AIA Review case number is accessible from party's My docket/Pending AIA reviews
`tab, the All AIA reviews tab, and Case Viewer. Once the Case Viewer is displayed, all
`previously added document content and information is shown, including document date
`and timestamp of addition. When a user files the document(s), an email confirmation is
`sent with a listing of the filed document(s).
`For additional details regarding how to file a document or a petition, please refer to the
`P-TACTS External User Guide (P-TACTS External User Training Resources | USPTO)
`A13. If the wrong document is submitted, can it be deleted through the P-
`TACTS interface?
`If a document is mistakenly filed, please contact PTAB AIA Trials at: 571-272-7822 or at
`trials@uspto.gov.
`A14. Can more than one person work on a case at the same time?
`Yes, more than one person can review documents or upload documents in a proceeding at the
`same time, even if they are sharing a user ID.
`A15. Will Patent Center for the challenged patent show whether a petition
`has been filed or a decision on the petition has been granted?
`Yes, for example, Patent Center will have entries for the following:
`Petition Requesting Trial
`Request for Trial Granted
`Request for Trial Denied
`Request for Trial Dismissed
`Trial Termination or Final Written Decision
`Trial Review Certificate Issued
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`A16. Is there any application programming interface (API) access to PTAB?
`Yes, we provide API access to the P-TACTS data through the Open Data Portal. To access the
`PTAB API, click on the USPTO API Catalog (https://developer.uspto.gov/api-catalog).
`A17. Can I download information in bulk from P-TACTS?
`P-TACTS is intended for use by the general public. Due to limitations of equipment and
`bandwidth, P-TACTS is not intended to be a source for bulk downloads of USPTO data.
`Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the
`general public by generating unusually high numbers of daily P-TACTS accesses (e.g., searches,
`pages, document retrievals), whether generated manually or in an automated fashion, may be
`denied access to P-TACTS without notice.
`For a single AIA Review case number, all proceeding documents may be downloaded in bulk by
`accessing the USPTO PTAB Decisions portal (https://developer.uspto.gov/ptab-
`web/#/search/proceedings).
`A18. How do I enter a foreign address in P-TACTS?
`To enter a foreign address:
`Input values in the address fields; Address Line 1, Address Line 2, City, and Postal Code
`(Zip) fields are not required.
`
`A19. If I am idle in P-TACTS for less than 25 minutes, what will happen?
`As long as the idle time during your session is within 30 minutes, you are not required to remain
`active. After the 30-minute time limit has been reached after continuous inactivity, you will be
`logged out of MyUSPTO and P-TACTS and will be required to log back into the system. To
`remain active, any key stroke, clicks, mouse movement, etc., will maintain your current working
`session.
`A20. If I am idle in P-TACTS for 25 minutes or more, will I lose any of the
`completed document uploads from the timed-out session if I clicked on the
`“Add to list” or “Submit” button?
`When initiating a new petition, any document uploaded in the Create New Petition Wizard with
`the “Add to list” button clicked on the Petition documents section will be saved and may be
`accessed at a later time from the List of documents table.
`For motions and rehearing requests, you must click “Save documents” button within the file a
`motion or rehearing request modal to save uploaded documents. You can access saved
`documents from the motions and/or rehearing tabs.
`All other documents do not currently have a save option within the file other documents modal
`and must be resubmitted.
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`A21. If I am idle in P-TACTS for 25 minutes or more, will I lose any of the
`data entered during the timed-out session if I did not select Submit?
`Any information entered on the current page will be lost unless the “Save” or “Add” button has
`been selected.
`A22. What will happen if I am idle for 25 minutes, how do I get back into
`my session?
`You must log in again to access your account within the P-TACTS website. Once you have
`logged back in, access My docket to locate a particular AIA Review case number, and open Case
`Viewer to resume your work.
`A23. How many cases can I view on My docket?
`The default view is 25 cases; to view more cases, change the pagination quantity selection on
`the bottom right of the My docket interface.
`A24. How do I view the status of submitted motions or rehearing requests?
`The My docket portal provides a Motions tab and a Rehearing requests tab that show content
`across all of your cases. Within each of these tabs, three groupings of Pending, All, and
`Unsubmitted are provided for quickly locating the document for an AIA Review case.
`Additionally, Case Viewer includes the same Motions tab and Rehearing requests tab but is AIA
`Review case number specific.
`A25. How do I file a Notice of Appeal?
`A Notice of Appeal document may be filed for an AIA Review case after the Board has filed a
`Final Written Decision or Termination decision. To file a Notice of Appeal, locate the AIA Review
`case number and open Case Viewer. Select the “Add” button and the File a notice of appeal
`menu option. The add document modal will be displayed. Enter information for all required
`fields marked by a red asterisk beginning with Date appeal filed. Next, select Availability and
`enter the Document name. Then, select the file to upload and the “Add to list” button, and file
`the Notice of Appeal by selecting the “Submit” button. Your filed Notice of Appeal will be
`displayed on the My docket, AIA reviews on appeal tab.
`B. Searching and reviewing documents
`B1. Can I use P-TACTS to search for a proceeding without registering?
`Yes. All public AIA Review cases can be searched in P-TACTS without registering. All public
`documents associated with the public cases can be viewed. Please be aware that: 1) any
`scanned PDF documents are not converted to an optical character recognition (OCR) PDF and
`any text contained in a scanned PDF document are not searchable; and 2) nonpublic documents
`will be listed when conducting a case search, but the document contents will not be viewable.
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`B2. Can I search for an AIA Review by the patent owner?
`Yes, you can search for an AIA Review by the AIA Review case number, Party Name, AIA
`Review/Case type, Patent Number, Application Number, or Technology Center.
`B3. Will P-TACTS collect and report statistics on the proceedings?
`Yes. PTAB publishes performance benchmarks for dispositions, pendency, inventory, and other
`tracking measures on the USPTO PTAB Statistics website
`(https://www.uspto.gov/patents/ptab/statistics).
`B4. Is full text document search available in P-TACTS?
`No, it is not.
`C. Registering as a P-TACTS User
`C1. Who can register?
`Anyone can register to use P-TACTS and create a user ID with their email address via MyUSPTO
`including pro se patent owners or attorneys who are not registered to practice before the
`USPTO under 37 C.F.R. § 11.6.
`C2. What information is required to register?
`In order to have a P-TACTS account, all user must have a MyUSPTO account. To register for a
`MyUSPTO account, you must enter your name, a phone number, a unique email address, and
`create a password for MyUSPTO registration. To log in to your P-TACTS account, you must
`enter your MyUSPTO credentials which include email and password.
`C3. How can I associate my USPTO registration number with my P-TACTS
`account?
`You can associate your USPTO registration number when you enter a case as either a Patent
`Owner or Petitioner. When the user is added as counsel, the user will be prompted to enter
`their USPTO registration number. P-TACTS will then save the registration number with the
`associated account for future use.
`Note: this information is not captured when you register for a MyUSPTO account
`D. Filing a petition
`D1. When will my petition be accorded a filing date?
`Once the USPTO reviews the petition and determines whether the petition is complete and the
`appropriate fees have been paid, the USPTO will send a notice to the petitioner and patent
`owner. The submission date of the compliant petition will be accorded as the filing date. If the
`petition complies with all of the statutory requirements (see 35 U.S.C. §§ 135, 312, and 322), the
`original submission date of the petition will be accorded as the filing date. Conversely, no filing
`date will be accorded if a statutory requirement is not satisfied. For example, for fee deficiencies,
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`the USPTO will accord the later submission date when all appropriate fees have been paid
`because the fees are required by statute. See, e.g., 35 U.S.C. § 312(a)(1). In the situation where a
`petition complies with all of the statutory requirements but contains only regulatory defects, the
`USPTO will accord the filing date of the original submission and notify the petitioner of the
`defects. The regulatory defects must then be corrected within the time period set forth in the
`notice.
`D2. Will the USPTO terminate the proceeding if I filed a complete petition
`that contains regulatory defects and failed to correct the defects within the
`time period set forth in the notice?
`Once the time period for correcting regulatory defects has expired, the petition will be
`forwarded to a Board panel who may initiate a conference call and/or issue an Order to show
`cause. If the petitioner fails to respond to such an Order appropriately, the proceeding may be
`terminated. It is important to note that the petitioner will not be entitled to a refund of any fees
`paid because the petition was in compliance with the statutory requirements for a filing date.
`For petitions filed on or after March 19, 2013, however, the petitioner may file a request for a
`refund of any post-institution fee paid. See this FAQs document, section E7.
`D3. How will the Board review petitions for statutory and regulatory
`compliance?
`Once a petition is submitted, a PTAB paralegal will review the petition for statutory and
`regulatory compliance. First, there are certain statutory requirements in 35 U.S.C. §§ 135(a),
`312(a), and 322(a) that must be met for a petition to be accorded a filing date. The following is a
`list of the top 5 things the paralegal will be looking for in inter partes review (