# Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/fr%3A2015-20227 ## Record - **Collection:** Federal Register - **Document type:** Proposed Rule - **Published:** August 20, 2015 - **Citation:** 80 FR 50720 ## Text DEPARTMENT OF COMMERCE United States Patent and Trademark Office 37 CFR Part 42 [Docket No. PT0-P-2015-0053] RIN 0651-AD01 Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board AGENCY: Patent Trial and Appeal Board, United States Patent and Trademark Office, U.S. Department of Commerce. ACTION: Proposed rule. SUMMARY: This proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office. DATES: Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before October 19, 2015 to ensure consideration. Roadshow Dates: The Office, in concert with the American Intellectual Property Association (“AIPLA”), will have a Road Show Series in August 2015 where the proposed rules will be discussed. This AIPLA/USPTO Road Show Series, entitled “Enhancing Patent Quality and Conducting AIA Trials,” will be held on August 24, 2015 in Santa Clara, California, August 26, 2015 in Dallas, Texas, and August 28, 2015 in Alexandria, Virginia. ADDRESSES: Comments should be sent by electronic mail message over the Internet addressed to: trialrules2015@uspto.gov. Comments may also be submitted by postal mail addressed to: Mail Stop Patent Board, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of “Lead Judge Susan Mitchell, Patent Trial Proposed Rules.” Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site ( http://www.regulations.gov ) for additional instructions on providing comments via the Federal e-Rulemaking Portal. Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message to be able to more easily share all comments with the public. The Office prefers the comments to be submitted in plain text, but also accepts comments submitted in ADOBE® portable document format or MICROSOFT WORD® FORMAT. Comments not submitted electronically should be submitted on paper in a format that accommodates digital scanning into ADOBE® portable document format. The comments will be available for public inspection at the Patent Trial and Appeal Board, currently located in Madison East, Ninth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be available for viewing via the Office's Internet Web site http://www.uspto.gov/patents/law/comments/index.jsp . Because comments will be made available for public inspection, information that the submitter does not desire to be made public, such as address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Susan L. C. Mitchell, Lead Administrative Patent Judge by telephone at (571) 272-9797. SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: This proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office. Summary of Major Provisions In an effort to gauge the effectiveness of the rules governing AIA trials, the Office conducted a nationwide listening tour in April and May of 2014, and in June 2014, published a Federal Register Notice asking for public feedback about the AIA trial proceedings. The Office has carefully reviewed the comments and, in response to public input, already has issued a first, final rule, which was published on May 19, 2015. That final rule addressed issues concerning the patent owner's motion to amend and the petitioner's reply brief that involved ministerial changes. For instance, the final rules provided ten additional pages for a patent owner's motion to amend, allowed a claims appendix for a motion to amend, and provided ten additional pages for a petitioner's reply brief, in addition to other ministerial changes to conform the rules to the Office's established practices in handling AIA proceedings. This second, proposed rule (the subject of this Federal Register document) addresses more involved proposed changes to the rules and proposed revisions to the Office Patent Trial Practice Guide. The Office presents the following proposed rules to address issues and public comments that were raised concerning the claim construction standard for AIA trials, new testimonial evidence submitted with a patent owner's preliminary response, Rule 11-type certification, and word count for major briefing. The Office will also later amend its Office Patent Trial Practice Guide to reflect developments in practice before the Office concerning how the Office handles additional discovery, live testimony, and confidential information. In response to the USPTO's roundtable on attorney-client privilege issues held in February 2015, the Office also requests input on recognizing privilege for communications between a patent applicant or owner and its U.S. patent agent or foreign patent practitioner in a possible future rulemaking. The Office anticipates that it will continue to refine the rules governing AIA trials to continue to ensure fairness and efficiency while meeting the congressional mandate. Therefore, the Office continues to encourage comments concerning how the rules may be refined to achieve this goal. Costs and Benefits: This rulemaking is not economically significant, and is not significant, under Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 18, 2007). Background Development of These Proposed Rules On September 16, 2011, the AIA was enacted into law (Pub. L. 112-29, 125 Stat. 284 (2011)), and shortly thereafter in 2012, the Office implemented rules to govern Office trial practice for AIA trials, including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings pursuant to 35 U.S.C. 135, 316 and 326 and AIA 18(d)(2). See Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 FR 48612 (Aug. 14, 2012); Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 FR 48680 (Aug. 14, 2012); Transitional Program for Covered Business Method Patents—Definitions of Covered Business Method Patent and Technological Invention, 77 FR 48734 (Aug. 14, 2012). Additionally, the Office published a Patent Trial Practice Guide for the rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings. See Office Patent Trial Practice Guide, 77 FR 48756 (Aug. 14, 2012). In an effort to gauge the effectiveness of these rules governing AIA trials, the Office conducted a nationwide listening tour in April and May of 2014. During the listening tour, the Office solicited feedback on how to make the trial proceedings more transparent and effective by adjusting the rules and guidance where necessary. To elicit even more input, in June of 2014, the Office published a Request for Comments in the Federal Register and, at stakeholder request, extended the period for receiving comments to October 16, 2014. See Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 79 FR 36474 (June 27, 2014). The Request for Comments asked seventeen questions on ten broad topics, including a general catchall question, to gather stakeholder feedback on any changes to the AIA trial proceedings that might be beneficial. See Request for Comments, 79 FR at 36476-77. The Office received thirty-seven comments from bar associations, corporations, law firms, and individuals encompassing a wide range of issues. The Office expresses its gratitude for the thoughtful and comprehensive comments provided by the public, which are available on the USPTO Web site: http://www.uspto.gov/page/comments-trial-proceedings-under-america-invents-act-patent-trial-and-appeal-board. Several commenters expressed satisfaction with the current rules governing AIA trial proceedings, and several commenters offered suggestions on how to strengthen the AIA trial proceeding rules. For example, some suggestions concerned the claim construction standard used by the PTAB, motions to amend, discovery procedures, and handling of multiple proceedings. The Office addressed all public comments that involved changes to the page limitations for a patent owner's motion to amend or a petitioner's reply brief in the first, final rulemaking. The Office will address the remaining comments in this second, proposed rulemaking. Differences Between the Proposed Rules and the Current Rules The Office will address the differences between the proposed rules and the current rules in relation to the seventeen questions that the Office asked in the June 27, 2014 Notice concerning the following ten topics: (1) Claim construction standard; (2) a patent owner's motions to amend; (3) a patent owner's preliminary response; (4) additional discovery; (5) obviousness; (6) real party in interest; (7) multiple proceedings; (8) extension of one year period to issue a final determination; (9) oral hearing; and (10) general topics. See 79 FR at 36476. The comments provided support for, opposition to, and diverse recommendations on the current rules. The Office appreciates the thoughtful comments, and has considered and analyzed the comments thoroughly. In this discussion, the Office will respond to the comments submitted in response to the seventeen questions (besides those which involved suggestions for page limitation changes for a patent owner's motion to amend or petitioner's reply brief) and set forth proposed changes to the rules and the Office Patent Trial Practice Guide. In addition, in order to further attempt to prevent any misuse of the AIA proceedings, the Office proposes to amend 37 CFR 42.11 (which prescribes the duty of candor owed to the Office in these proceedings) to include a Federal Rule of Civil Procedure Rule 11-type certification for all papers filed with the Board in these proceedings, including a provision for sanctions for misconduct in connection with such papers. If appropriate, such misconduct in the course of AIA proceedings might also be reported to the Office of Enrollment and Discipline. Claim Construction Standard The Office asked, “Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?” 79 FR at 36476. The Office received comments advocating various positions, including that it should continue to apply the broadest reasonable interpretation standard in construing terms of an unexpired patent, that it should use a Phillips -type construction standard for all patents at issue in AIA proceedings, and that it use the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 130 (Fed. Cir. 2005 (en banc), under certain circumstances. The Office will address each of these suggestions in turn. Comment 1: Multiple commenters recommended that the Office continue to apply the broadest reasonable interpretation standard in construing terms of an unexpired patent at issue in an inter partes review proceeding, post-grant review proceeding, or covered business method review proceeding. These commenters stressed that “the broadest reasonable construction standard used during traditional ex parte prosecution, reissue, and reexamination practice is a reasonable standard to use in PTAB proceedings.” These same commenters noted that the “PTO has a long-standing practice of giving patent claims their broadest reasonable interpretation during examination and during other post-issuance proceedings such as reexamination, reissue and interference for good reason,” which “serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified.” Conversely, the Office received a comment suggesting the use of a Phillips -type construction standard for all patents, stating that “claims in AIA trials should be construed as they have been or would be construed in a civil action to invalidate a patent under Patent Act section 282, including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art, the prosecution history pertaining to the patent, and prior judicial determinations and stipulations relating to the patent.” The commenter also stated that “the PTAB should apply the Phillips construction during AIA trials because they are adjudicative proceedings like litigation,” and not examination proceedings like inter partes reexamination. Response: The comments favoring retention of the BRI approach are adopted. The Office appreciates the suggestions and will continue to apply the broadest reasonable interpretation standard to claims in an unexpired patent at issue in an AIA proceeding. The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has held recently that the Office is authorized to employ the broadest reasonable construction approach to construing terms of an unexpired patent at issue in an inter partes review proceeding—the Federal Circuit found that the BRI approach is consistent with legislative intent and reasonable under the Office's rulemaking authority. In re Cuozzo Speed Techs., LLC, No. 2014- 1301, 2015 WL 4097949, at *7-8 (Fed. Cir. July 8, 2015). In making this determination, the Federal Circuit observed that “[t]here is no indication that the AIA was designed to change the claim construction standard that the PTO has applied for more than 100 years. Congress is presumed to legislate against the background of the kind of longstanding, consistent existing law that is present here. Moreover, Congress in enacting the AIA was well aware that the broadest reasonable interpretation standard was the prevailing rule.” Id. at *6. The Federal Circuit recognized that because an inter partes review proceeding provides the patent owner the opportunity to amend its claims, use of the broadest reasonable interpretation approach is appropriate, regardless of “the fact that IPR may be said to be adjudicatory rather than an examination.” Id. at *16. The Federal Circuit also stated, “[a]lthough the opportunity to amend is cabined in the IPR setting, it is thus nonetheless available,” and specifically addressed the prohibition on post-issuance broadening at issue in the case, further stating that at least this restriction on motions to amend “does not distinguish pre-IPR processes or undermine the inferred congressional authorization of the broadest reasonable interpretation standard in IPRs.” Cuozzo, 2015 WL 4097949, at 7. Comment 3: The Office received multiple comments recommending changing the claim construction standard in certain circumstances. These commenters advocated for the use of the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) for some or all of the following circumstances: (a) Unexpired patents where the ability to amend claims is no longer present in the trial, such as when a patent owner has elected to forego the opportunity to amend; (b) unexpired patents where the patent will expire prior to the final decision; (c) unexpired patents subject to a terminal disclaimer prior to final decision; and/or (d) unexpired patents when the parties to the trial have each filed claim construction briefings in another tribunal on terms at issue in the trial. Response: These comments are adopted in part. The Office agrees that the application of a Phillips -type claim construction for claims of a patent that will expire prior to the issuance of a final decision is appropriate. Such patents essentially lack any viable opportunity to amend the claims in an AIA proceeding. Therefore, for patents that will expire prior to issuance of any final written decision by the Office, the Office proposes to apply a Phillips -type standard during the proceeding. A scenario where it is clear that a patent will expire before a final decision is issued by the Office is a definitive circumstance where a petitioner can determine which claim construction will be applied with guidance from the Office. Specifically, the Office proposes to amend 37 CFR 42.100(b), 42.200(b), and 42.300(b) to reflect this change in the claim construction standard for claims in patents that will expire before a final written decision is issued in an AIA proceeding. The Office also intends to issue specific guidelines in the Office Patent Trial Practice Guide. The Office invites comments on how to structure guidelines to implement this change. For instance, the Office welcomes comments on the following questions: Should the Office set forth guidelines where a petitioner may determine, before filing a petition, which claim construction approach will be applied by the Office based on the relevant facts? Should the petitioner, who believes that the subject patent will expire prior to issuance of a final written decision, be required to submit claim interpretation analysis under both a Phillips -type and broadest reasonable interpretation approaches or state that either approach yields the same result? Should the Office entertain briefing after a petition if filed, but before a patent owner preliminary response is filed, concerning what standard should be applied? As to the remaining scenarios set forth by commenters, the Office will continue to apply a broadest reasonable interpretation standard because at the time that a petition is filed in each of those scenarios, the patent owner's ability to amend remains available. To allow the patent owner unilaterally to decide to forego any opportunity to amend after a petition has been filed, and thereby opt-in to a Phillips -type construction, appears to be unworkable, given the timeline applicable to AIA proceedings. In particular, the timeline would not allow a petitioner adequate time to amend the petition to reflect a different claim construction standard. The Office invites comments suggesting any workable and efficient solutions for scenarios where the patent owner chooses to forego the right to amend claims in an AIA proceeding, including any suggested revisions to the rules or the Office Patent Trial Practice Guide. Patent Owner's Motions To Amend The Office asked, “What modifications, if any, should be made to the Board's practice regarding motions to amend?” 79 FR at 36476. The Office received a spectrum of comments that ranged from seeking no change in amendment practice to proposals for liberal grant of amendments in AIA proceedings. The Office addresses these comments below. Since receipt of these comments, the Office has clarified its statement made in Idle Free System, Inc. v. Bergstrom, Inc., Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26) (informative), that “[t]he burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. ” Id. at 7 (emphasis added). Specifically, the Office addressed what the references to “prior art of record” and “prior art known to the patent owner” mean, and how the burden of production shifts to the petitioner once the patent owner has made its prima facie case for patentability of the amendment. See MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 1-3 (PTAB July 15, 2015) (Paper 42). This decision clarifies that a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, including any art provided in light of a patent owner's duty of candor, and any other prior art or arguments supplied by the petitioner, in conjunction with the requirement that the proposed substitute claims be narrower than the claims that are being replaced. Comment 1: A number of commenters expressed satisfaction with the Board's current rules and practices for motions to amend. One commenter identified Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2014-00027 (PTAB June 11, 2013) (Paper 26) (informative), as outlining practices consistent with congressional intent and “striking an appropriate balance between the public's interest in challenging the patentability of questionable patents and a patent owner's interest in maintaining patent protection for a legitimate invention.” Another commenter stated that although the Board's current requirements for motions to amend provide patent owners with a fair opportunity to narrow claims in response to a petitioner's arguments and provide petitioners with fair notice regarding the type of amendment they need to rebut, the Office should consider providing consistent guidance through a precedential opinion or other means. Response: These comments are adopted. The Office is committed to improving its rules and practices for motions to amend and AIA trial practice in general. Accordingly, the Office will continue to make improvements and clarifications via the rule-making process, by updating the Office Patent Trial Practice Guide, and by designating opinions as precedential or informative, as warranted. For example, as discussed above, the Office has issued an opinion that clarifies what is meant by “prior art of record” and “prior art known to the patent owner” in the context of a patent owner's prima facie case of patentability in a motion to amend. See MasterImage, slip op. at 1-3. Comment 2: One commenter advocated eliminating the opportunity to amend claims in AIA trial proceedings based on the premise that AIA trial proceedings are better designed to be expedited proceedings for determining claim patentability, not an examination. Response: As the commenter recognizes, a patent owner's right to file a motion to amend is statutorily mandated (35 U.S.C. 316(d), 326(d)), as is the duty of the Director to provide standards and procedures for allowing such amendment (35 U.S.C. 316(a)(9), 326(a)(9)). Absent a change in statutory authority, the Office cannot withdraw the opportunity to amend claims in AIA trial proceedings. Comment 3: Several commenters stated that the burden of proving the patentability of any proposed substitute claim should remain with the patent owner. Other commenters stated the contrary—that the burden should be shifted to the patent challenger to prove a proposed substitute claim unpatentable. Other commenters suggested intermediate positions targeted to reducing the burden on the patent owner, who submits a motion to amend, by requiring that the patent owner only bear the burden of proving patentability over the cited art in the petition or asserted grounds of unpatentability. Another commenter suggested that, similar to practice before the European Patent Office, motions to amend in AIA trials could include the participation of a USPTO Examiner from the technology center, preferably the examiner who originally granted the subject patent, and be limited to reviewing the broadest claim of a substitute claim set to allow patent owners to present multiple narrowing claim sets as fallback positions. Response: These comments are adopted in part. The Board currently does not contemplate a change in rules or practice to shift the ultimate burden of persuasion on patentability of proposed substitute claims from the patent owner to the petitioner. Depending on the amendment, a petitioner may not have an interest in challenging patentability of any substitute claims. Therefore, the ultimate burden of persuasion on patent owner's motion to amend remains best situated with the patent owner, to ensure that there is a clear representation on the record that the proposed substitute claims are patentable, given that there is no opportunity for separate examination of these newly proposed substitute claims in these adjudicatory-style AIA proceedings. See Microsoft Corp. v. Proxyconn, Inc., Nos. 2014-1542, 2014-1543, 2015 WL 3747257, at *12 (Fed. Cir. June 16, 2015) (stating ultimate burden of persuasion remains with the patent owner, the movant, to demonstrate the patentability of the substitute claims). The Board's decision in MasterImage clarifies the meaning of the terms “prior art of record” and “prior art known to the patent owner” as set forth in Idle Free, which stated that the burden is on the patent owner “to show patentable distinction over the prior art of record and also prior art known to the patent owner.” Idle Free, slip op. at 7. The Office stated in MasterImage that, “[t]he reference to `prior art of record' in the above-quoted text, as well as everywhere else in Idle Free, should be understood as referring to: a. any material art in the prosecution history of the patent; b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; and c. any material art of record in any other proceeding before the Office involving the patent.” MasterImage, slip op. at 2. The Office also stated that the term “prior art known to the patent owner,” as used in Idle Free, “should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 CFR 42.11, in light of a Motion to Amend.” Id. At this time, the Office does not contemplate seeking assistance from the Examining Corps for review of motions to amend. In addition, the Office has clarified how the burden of production shifts between the parties with regard to a motion to amend. “With respect to a motion to amend, once Patent Owner has set forth a prima facie case of patentability of narrower substitute claims over the prior art of record, the burden of production shifts to the petitioner. In its opposition, the petitioner may explain why the patent owner did not make out a prima facie case of patentability, or attempt to rebut that prima facie case, by addressing Patent Owner's evidence and arguments and/or by identifying and applying additional prior art against proposed substitute claims. Patent Owner has an opportunity to respond in its reply. The ultimate burden of persuasion remains with Patent Owner, the movant, to demonstrate the patentability of the amended claims.” MasterImage, slip op. at 2 (citing Microsoft, 2015 WL 3747257, at *12). Comment 4: Several commenters suggested that patent owners should not be required to cancel a challenged claim in order to submit a substitute claim and/or should be permitted to propose more than one substitute claim per challenged claim. Response: Rule 42.221(a)(3) provides that a motion to amend may “cancel a challenged claim or propose a reasonable number of substitute claims,” and for efficiency, sets forth the rebuttable presumption “that only one substitute claim would be needed to replace each challenged claim.” As 37 CFR 42.121(a)(3) and 42.221(a)(3) provides, this presumption “may be rebutted by a demonstration of need.” This strikes a reasonable balance between maintaining the efficiency of the proceedings and allowing a patent owner to present additional substitute claims when need is shown. Although patent owners are encouraged to submit a single substitute claim for each canceled claim, the Rules do not prohibit a motion to amend that proposes more than one replacement claim for each cancelled claim. Patent owners are encouraged to confer with the Board where an appropriate showing of need can be made. The Board does not, however, contemplate a change in rules or practice at this time. Comment 5: Several commenters suggested that motions to amend should be liberally allowed. One commenter suggested the Office should evaluate a motion to amend in the same way that the entry of a supplemental response in prosecution is evaluated, as under 37 CFR 1.111(a)(2). Response: These suggestions are not adopted. Under 35 U.S.C. 316(a)(9) and 326(a)(9), the Office has the authority to set forth standards and procedures for allowing a patent owner to move to amend the patent under 35 U.S.C. 316(d) and 326(d). And 35 U.S.C. 316(d) and 326(d) sets forth certain statutory limitations for amendments for a patent in an AIA proceeding, including limiting the number of proposed claims to a “reasonable number of substitute claims” (35 U.S.C. 316(d)(1)(B)) and prohibiting amendments that “enlarge the scope of the claims of the patent or introduce new matter” (35 U.S.C. 316(d)(3)). Thus, by statute, motions to amend cannot be entered in the same way as amendments that are entered during prosecution, which are not bound by such restrictions. Moreover, AIA proceedings are neither ex parte patent prosecution nor patent reexamination or reissue. The Board does not conduct a prior art search to evaluate the patentability of the proposed substitute claims, and any such requirement would be impractical given the statutory structure of AIA proceedings. If a motion to amend is granted, the substitute claims become part of an issued patent, without any further examination by the Office. Because of this constraint, the Office has set forth rules for motions to amend that account for the absence of an independent examination by the Office where a prior art search is performed as would be done during prosecution, reexamination, or reissue. As set forth above, however, the Office does recognize a clarification of amendment practice that affirmatively states that a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, including art provided in light of a patent owner's duty of candor and any other prior art or arguments supplied by the petitioner, in conjunction with the statutory requirement that the proposed substitute claims be narrower than the claims that are being replaced. In light of these requirements, the Office has explained how the burden of production shifts to the petitioner once the patent owner has set forth a prima facie case of patentability of narrower substitute claims. MasterImage, slip op. at 3. Comment 6: Several commenters suggested that the Office provide additional guidance in conferences regarding motion to amend practice, including guidance on what prior art the patent owner needs to distinguish in a motion to amend. One commenter stated that the Office could confirm for a patent owner whether a new prior art search is required and whether providing information similar to the accelerated examination support documents (ESD) would be sufficient for a patent owner to carry its burden. Another commenter suggested making clear in the Rules and the Trial Practice Guide that a reissue application can be utilized after a final written decision as an examination mechanism for amending claims and that the burden of persuasion for permitting the Board to consider a motion to amend is not the same as the burden of proof as to the patentability of any claims that are the subject to a motion to amend. Response: These comments are adopted in part as set forth above. The Office has explained how the burden of production shifts to the petitioner once the patent owner has set forth a prima facie case of patentability of narrower substitute claims. MasterImage, slip op. at 3. Also, 37 CFR 42.121(a) and 42.122(a) require the patent owner to hold a conference call with the Office before the patent owner files a motion to amend. During that call, the judges provide technical guidance to the patent owner and the petitioner regarding the motion. If the parties have questions regarding the proper scope of a motion to amend, the parties may discuss those issues with the judges during the conference call. In addition, the Board notes the following Board decisions on motions to amend as further guidance: MasterImage, slip op. at 1-3); Idle Free Systems, Inc. v. Bergstrom, Inc., Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26) (informative); Int'l Flavors & Fragrances Inc. v. United States of America, Case IPR2013-00124 (PTAB May 20, 2014) (Paper 12) (informative); Corning Optical Comms. RF, LLC v. PPC Broadband, Inc., Case IPR2014-00441 (PTAB Oct. 30, 2014) (Paper 19); Riverbed Tech., Inc. v. Silver Peak Systems, Inc., Case IPR2013-00403 (PTAB Dec. 30, 2014) (Paper 33); Reg Synthetic Fuels LLC v. Neste Oil OYJ, Case IPR2014-00192 (PTAB June 5, 2015) (Paper 48). As for whether to revise the Rules and the Trial Practice Guide to state that a reissue application can be utilized as a mechanism for amending the claims after final written decision, the Office declines to propose a blanket rule applicable to all reissues, which have additional requirements governing those proceedings. As for distinguishing between the burden of persuasion for permitting the Board to consider a motion to amend and the burden of proof as to patentability, the patent owner has a statutory right to file a motion to amend under 35 U.S.C. 316(d) and 326(d). Thus, there is no burden of persuasion for permitting the Board to consider a motion to amend, as the Board must consider a motion to amend that is filed in a proceeding. Comment 7: One commenter suggested that the Office should allow patent owners to cure minor defects in motions to amend, such as the failure to construe a claim term that the Board deems necessary or failure to provide written description support for the substitute claim language. The commenter further suggested that the petitioner should be allowed to respond to these further comments by the patent owner. Response: If the Board deems it appropriate, the Board may allow a patent owner to cure minor defects in a motion to amend upon request. Given the time constraints of these proceedings, however, the suggested further exchange of briefing may be incompatible with the case schedule. To the extent a patent owner is aware of any such defects, the Office recommends that the patent owner seek authorization from the Board to revise its motion to amend as soon as possible. Comment 8: Several commenters suggested that the Office should rescind the patent owner estoppel provision of 37 CFR 42.73(d)(3) because the commenters believed the Rule “precludes a patent owner from obtaining from the Office in another proceeding a patent claim that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim.” Response: This suggestion is not adopted. Under 37 CFR 42.73(d)(3), a patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent (1) A claim that is not patentably distinct from a finally refused or canceled claim; or (2) An amendment of a specification or of a drawing that was denied during the trial proceeding, but this provision does not apply to an application or patent that has a different written description. Thus, 37 CFR 42.73(d)(3) does not expressly preclude a patent owner from obtaining, in another proceeding, all patent claims that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim, as the commenters suggest. By its terms, this rule precludes a patent applicant or owner from obtaining, in another proceeding, claims that are not patentably distinct from a finally refused or canceled claim. Comment 9: One commenter suggested that the rules are unfair because the patent owner must file its motion to amend at the same time that it files its patent owner response. The commenter states, “[t]herefore, the patent owner must put forward all its arguments for patentability without knowing whether the original or amended claims will be reviewed by the PTAB.” Response: When the patent owner files its patent owner response, the Board will have issued its decision on institution, which identifies the grounds and claims on which the inter partes or post-grant review is instituted. Moreover, AIA proceedings before the Office are required, by statute, to be completed no later than one year from the date on which the Director notices the institution of a review, except where good cause is shown to extend the one-year period, which extension may be no more than six months. 35 U.S.C. 316(a)(11); 37 CFR 42.100(c). Due to the time constraints imposed on these proceedings, the Office deemed it most efficient for patent owners to file their motions to amend no later than the filing of the patent owner response. See 37 CFR 42.121, 42.221. The patent owner, however, may file a motion to amend at an earlier stage of the proceeding. Comment 10: One commenter suggested that when a patent owner concedes the unpatentability of an existing claim and files a non-contingent motion to amend, claim cancellation should take place immediately. The commenter stated that, under current practice, the conceded claim remains in effect until the Board issues its final written decision, which allows the patent owner to assert the conceded claim in parallel proceedings. Accordingly, the commenter suggested that a patent owner should not be permitted to concede a claim's patentability before the Board while continuing to assert it in litigation. Response: This suggestion is not adopted. The defendant in such litigation may seek relief before the district court. The Board typically considers all papers at once for purposes of rendering the final written decision. That practice is generally most efficient, in light of the large number of cases pending before the Board. Also, a patent owner who asserts a claim in a parallel proceeding that was conceded to be unpatentable may face potential sanctions, and registered practitioners who assert such a claim may face disciplinary investigation by the Office of Enrollment and Discipline. In the event, however, that a patent owner concedes unpatentability and requests cancellation of any claims, the parties may request a conference call with the panel to request cancellation of those claims before issuing the final written decision. Comment 11: One commenter suggested that if a motion to amend is denied, the patent owner should be allowed to convert the denied motion to amend into an ex parte reexamination of the substitute claims. Accordingly, any prior art raised in either the motion or the opposition should be applied as the substantial new question of patentability in reexamination. Response: This suggestion is not adopted. The rules for a request for ex parte reexamination apply different parameters than the rules for motions to amend in AIA proceedings. Compare 37 CFR 1.510(b) with 37 CFR 42.121, 42.221. Thus, the Office cannot convert a denied motion to amend into an ex parte reexamination of the proposed substitute claims that does not address the requirements of a request for ex parte reexamination. Patent Owner's Preliminary Response The Office asked, “Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?” 79 FR at 36476. The Office received comments that range from advocating preserving the current prohibition on the patent owner's ability to assert new testimonial evidence at the preliminary response stage, an intermediate position of allowing new testimonial evidence on issues for which the patent owner bears the burden of proof or in response to petitioner's declarant, to allowance of new testimonial evidence by patent owner at the preliminary response stage with no restriction on scope. Commenters did express an overall concern with the ability of parties to conduct adequate discovery relating to testimonial evidence and adhering to the statutory timeline for instituting proceedings. The Office proposes amending the rules to allow the patent owner to file new testimonial evidence with its preliminary response. In order to be able to meet the three-month statutory deadline for issuing a decision on institution, the rules will provide expressly that no right of cross-examination of a declarant exists before institution. Because the time frame for the preliminary phase of an AIA proceeding does not allow for such cross-examination as of right, nor for the petitioner to file a reply brief as of right, the Office proposes amending the rules to provide that any factual dispute that is material to the institution decision will be resolved in favor of the petitioner solely for purposes of making a determination about whether to institute. This is proposed, among other reasons, to preserve petitioner's right to challenge statements made by the patent owner's declarant. Comment 1: Several commenters suggested that the patent owner should be allowed to rely on new testimonial evidence in its preliminary response to the petition given that the petitioner may rely upon such evidence in its petition, and that the current practice of not allowing a patent owner to rely on such evidence is unfair. Within these comments were examples of testimonial evidence that should be allowed in a preliminary response, such as testimony related to claim construction, issues regarding obviousness, and issues for which the patent owner has the burden of proof. Certain comments suggested that early development of the record would increase efficiency by leading to fewer institutions or institution on fewer grounds. Other comments said that the current rule should not be changed because the time period prior to institution does not allow a petitioner to evaluate fully the new evidence, the petitioner would not have an opportunity to cross-examine the witness, and the patent owner has a full opportunity to submit evidence post-institution. Response: The Office proposes to amend the rules for the patent owner preliminary response (37 CFR 42.107, 42.207) to allow new testimonial evidence, thereby adopting the suggestions that the patent owner be allowed to rely upon supporting testimonial evidence in response to the petition. Sections 313 and 323 of Title 35 state that the patent owner may file a preliminary response that sets forth reasons why no institution should be granted. Therefore, the Office believes that it would be fair and equitable to consider supporting evidence submitted with a preliminary response. If supporting evidence is submitted by a patent owner, cross-examination of the witness providing the testimony is likely to be permitted only after the institution of the proceeding, given the time constraints surrounding the institution decision. Section 316(a)(5)(A) of Title 35 states that the Director shall prescribe regulations setting forth standards and procedures for discovery of relevant evidence including the depositions of witnesses submitting affidavits or declarations. Allowing for cross-examination as of right prior to the institution of a proceeding would negatively impact the ability of the Office to meet the statutory requirements set out in 35 U.S.C. 314(b) and 324(c), and would result in more cost to the parties before a review is instituted. In order for the Board to act consistently when confronted with material factual disputes in the institution decision briefing and evidence, the Office proposes that any such factual disputes will be resolved in favor of the petitioner solely for purposes of deciding whether to institute. The petitioner also will be afforded an opportunity to seek permission to file a reply brief to respond to a preliminary response that presents testimonial evidence, though it will not be able to file such a reply as of right. Comment 2: The Office received several comments suggesting that the Board provide for the submission of a petitioner reply to the patent owner preliminary response, particularly if the Board were to amend the rule for the patent owner preliminary response to allow new testimonial evidence. Many of these commenters stated that the petition itself is limited because the petitioner cannot anticipate all arguments that the patent owner may make ( e.g., the patent owner preliminary response may present additional claim constructions), and that a petitioner's rehearing request does not provide a timely opportunity for the petitioner to reply to the patent owner preliminary response. However, one commenter opposed this suggestion, stating that “in all fairness the only way to reasonably address such a drastic change were it implemented would be by the inventor/[patent owner] being allowed to then file a sur-reply to Petitioner's reply. . . .” Many of the commenters noted the short statutory timeframe for the pre-institution phase as a factor that limits the number of briefs that may be allowed. Response: Because the Office proposes to amend the rules for the patent owner preliminary response (37 CFR 42.107, 42.207) to allow new testimonial evidence, the Office proposes to change the rules to provide for a petitioner to seek leave to file a reply to the patent owner preliminary response. In particular, each of 35 U.S.C. 316(a)(13) and 326(a)(12) states that the Director shall prescribe regulations providing the petitioner with “at least 1 opportunity to file written comments.” The Office proposes to change the rules to provide expressly that a petitioner may seek leave to file a reply to a preliminary response including new testimonial evidence, so that the Office may allow a reply when the circumstances so warrant. Comment 3: Several commenters requested clarification of “new testimonial evidence” as used in 37 CFR 42.107(c). These comments indicated that the current rules, procedures, and cases do not provide adequate guidance as to what testimonial evidence is permitted in a preliminary response. Response: Because the Office proposes to amend the rules for the patent owner preliminary response (37 CFR 42.107, 42.207) to allow new testimonial evidence, additional clarification is not necessary. Additional Discovery The Office asked, “Are the factors enumerated in the Board's decision in Garmin v. Cuozzo, IPR2012-00001, appropriate to consider in deciding whether to grant a request for additional discovery? What additional factors, if any, should be considered?” 79 FR at 36476. The Office provides guidance on its Web site, see, e.g., http://www.uspto.gov/blog/aia/entry/message_from_administrative_patent_judges, in response to comments generated from these questions, and plans to revise the Office Patent Trial Practice Guide to reflect this guidance. Comment 1: A number of comments indicated that the Garmin factors are appropriate. Some of the comments further noted that the Garmin factors help the Office to strike the right balance for AIA trial proceedings, permitting parties to obtain meaningful discovery while preventing expensive, broad discovery. The comments also urged the Office to continue applying those factors. Several comments also expressed the view that the first, third, and fifth Garmin factors provide an important safeguard to minimize costs and limit distractions, ensuring fast and efficient resolution on the merits. Response: These comments are adopted. The Office appreciates the suggestions and will continue to apply the Garmin factors on a case-by-case basis when considering whether additional discovery in an inter partes review is necessary in the interest of justice, as follows: 1. More Than A Possibility And Mere Allegation. The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient. Thus, the party requesting discovery already should be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. “Useful” does not mean merely “relevant” or “admissible,” but rather means favorable in substantive value to a contention of the party moving for discovery. 2. Litigation Positions And Underlying Basis. Asking for the other party's litigation positions and the underlying basis for those positions is not necessarily in the interest of justice. 3. Ability To Generate Equivalent Information By Other Means. Discovery of information a party reasonably can figure out, generate, obtain, or assemble without a discovery request would not be in the interest of justice. 4. Easily Understandable Instructions. The requests themselves should be easily understandable. For example, ten pages of complex instructions are prima facie unclear. 5. Requests Not Overly Burdensome To Answer. The Board considers financial burden, burden on human resources, and burden on meeting the time schedule of the review. Requests should be sensible and responsibly tailored according to a genuine need. Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6-7 (PTAB Mar. 5, 2013) (Paper 26) (informative). The Office also applies similar factors in post-grant reviews and covered business method patent reviews when deciding whether the requested additional discovery is supported by a good cause showing and “limited to evidence directly related to factual assertions advanced” by a party. See 37 CFR 42.224; Bloomberg Inc. v. Markets-Alert Pty Ltd, Case CBM2013-00005, slip op. at 3-5 (PTAB May 29, 2013) (Paper 32). Comment 2: A comment suggested that the Office should provide rule-based guidance on the “interest of justice” standard. Response: As discovery disputes are highly fact dependent, the Office has found that the flexible approach as set forth in Garmin provides helpful guidance to the parties and assists the Office in achieving the appropriate balance, permitting meaningful discovery, while securing the just, speedy, and inexpensive resolution of every proceeding. Comment 3: One comment suggested that the Office should continue to place emphasis on maintaining the one-year trial schedule by encouraging parties to raise discovery issues early in the proceeding, even during the pre-institution stage. Response: This comment is adopted. As explained in Garmin regarding Factor 5—discovery requests must not be overly burdensome to answer—the Office will consider the burden on meeting the schedule of the proceeding. Garmin, Case IPR2012-00001, slip op. at 7. For example, as discussed below, the Office has granted reasonable, narrowly tailored discovery requests prior to institution when the patent owner raises sufficient concerns regarding the petitioner's identification of real parties-in-interest. Moreover, the Scheduling Order of each trial utilizes sequenced discovery, whereby parties can conduct meaningful discovery before they are required to submit their respective motions and oppositions, taking into account the complexity of the proceeding, while ensuring that the trial is completed within one year of institution. Parties are encouraged to raise discovery issues, and confer with each other regarding such issues, as soon as they arise in a proceeding. Comment 4: One comment suggested that Factor 2 should not be applied as a per se rule. Response: Garmin sets forth a flexible approach in which the Garmin factors are not per se rules. As explained in Garmin regarding Factor 2, the Board has established rules and practices for the presentation of arguments and evidence, and there is a proper time and place for each party to make its presentation. Garmin, Case IPR2012-00001, slip op. at 13. For instance, under 37 CFR 42.51(b)(1) for routine discovery, a party has the opportunity to cross-examine the opposing party's declarant with regard to the basis of his or her testimony. Moreover, as discovery disputes are highly fact dependent, the Office decides each issue on a case-by-case basis, taking account of the specific facts of the proceeding. See, e.g., Bloomberg Inc. v. Markets-Alert Pty Ltd., Case CBM2013-00005, slip op. at 6-7 (PTAB May 29, 2013) (Paper 32) (granting a specific and narrowly tailored request seeking information considered by an expert witness in connection with the preparation of his declaration filed in the proceeding). Comment 5: One comment recommended that the Office expressly consider the specificity of the request, require parties to identify requested documents with the greatest possible specificity, and reject broad, amorphous requests that do not reasonably identify responsive documents. Other comments urged the Office to add the following additional factors, ensuring that the Garmin factors would be applied correctly and permitting additional discovery when it is actually warranted: (1) Whether the information is solely within the possession of the other party; (2) whether the information already has been produced in a related matter; and (3) whether the discovery sought relates to jurisdictional issues under 35 U.S.C. 315 and 325. Response: Garmin sets forth a flexible and representative framework for providing helpful guidance to the parties, and assisting the Office to decide whether additional discovery requested in an inter partes review is necessary in the interest of justice, consistent with 35 U.S.C. 316(a)(5), or whether additional discovery in a post-grant review is supported by a good cause showing, consistent with 35 U.S.C. 326(a)(5). The list of factors set forth in Garmin is not exhaustive. The Office applies the factors on a case-by-case basis, considering the particular facts of each discovery request, including the particular arguments raised by a party seeking additional discovery. Under this flexible approach, parties are permitted to present their arguments using different factors including those suggested in the comments. In fact, the suggested additional factors are subsumed effectively already under the Garmin factors, and have been considered by the Office in deciding whether to grant additional discovery requests. See, e.g., Int'l Sec. Exch., LLC v. Chi. Bd. Options Exch., Inc., Case IPR2014-00097 (PTAB July 14, 2014) (Paper 20) (granting a specific, narrowly tailored, and reasonable request for additional discovery of information that Patent Owner could not have obtained reasonably without a discovery request). As noted below, the Office frequently has granted reasonable discovery requests that are specific, narrowly tailored, and not overly burdensome in cases where a patent owner timely raises a real party-in-interest or privity challenge. See, e.g., Nestle USA, Inc. v. Steuben Foods, Case IPR2015-00195 (PTAB Feb. 27, 2015) (Paper 21) (granting Patent Owner's request for a sales agreement between Petitioner and another entity that allegedly contains indemnity, control, and cooperation provisions). Comment 6: One comment suggested combining Factor 4 and Factor 5. Response: Factor 4 and Factor 5 address different concerns. In particular, Factor 4 promotes the use of easily understandable instructions and, thereby, guards against the use of long and complex instructions that could unduly burden the producing party. Factor 5, by contrast, focuses on burdens and time constraints associated with complying with a request for additional discovery and, thereby, assists the Office in limiting discovery to requests that can be satisfied without disrupting the schedule, and which do not impose undue financial or human resource burdens on the producing party. As discussed above, parties have the flexibility under the Garmin framework to adopt a different combination of factors to present their arguments, including combining their analyses regarding Factor 4 and Factor 5. Comment 7: Several comments indicated that, although the Garmin factors are appropriate, they sometimes are being applied incorrectly to require the moving party to have the actual evidence being sought. Response: As explained in Garmin, the moving party, who is seeking additional discovery, should present a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. Garmin, Case IPR2012-00001, slip op. at 7-8. This factor ensures that the opposing party is not overly burdened, and the proceeding not unnecessarily delayed, by speculative requests where discovery is not warranted. The Office, however, does not require the moving party to have any actual evidence of the type being sought, for example, where reasoning is presented that tends to show beyond speculation that something useful will be uncovered. Furthermore, a party who is dissatisfied with a decision and believes the Office misapprehended or overlooked a matter in denying additional discovery may file a request for rehearing, without prior authorization. See 37 CFR 42.71(d). Obviousness The Office asked, “Under what circumstances should the Board permit the discovery of evidence of non-obviousness held by the Petitioner, for example, evidence of commercial success for a product of the Petitioner? What limits should be placed on such discovery to ensure that the trial is completed by the statutory deadline?” 79 FR at 36476. The Office provides guidance on its Web site, see, e.g., http://www.uspto.gov/blog/aia/entry/message_from_administrative_patent_judges, in response to comments generated from these questions, and will revise the Office Patent Trial Practice Guide to reflect this guidance. Comment 1: Several comments suggested that the Office should permit discovery of evidence of non-obviousness held by the petitioner in all cases. Another comment indicated that, if a request is narrowly tailored, this may be one situation where additional discovery may be permissible. In contrast, several other comments recommended that the Office should very rarely, if ever, permit discovery of the petitioner's product, as it would require a mini-trial on whether the petitioner's product infringes the patent, overwhelming the AIA trial process, undermining the efficient, focused procedure, making it impossible to conclude the AIA trial proceedings within the statutory deadline, and imposing a significant burden on the petitioner. Several comments further suggested that the Office should continue to apply the Garmin factors ( see Garmin Int'l Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26) (informative)), allowing discovery only when the patent owner establishes that the additional discovery is in the interest of justice. Response: The Office appreciates the varying points of view. The Office has considered these comments and believes that the Garmin factors currently provide appropriate and sufficient guidance for how to handle requests for additional discovery, which the Office will continue to decide on a case-by-case basis. The Office will continue to seek feedback as the case law develops as to whether a more specific rule for this type of discovery is warranted or needed. The Office encourages parties to confer and reach an agreement on the information to exchange early in the proceeding, resolving discovery issues promptly and efficiently. See 37 CFR 42.51(a). As explained in the Office Patent Trial Practice Guide, the parties may agree to certain initial disclosures, including information regarding secondary indicia of non-obviousness from the petitioner. Office Patent Trial Practice Guide, 77 FR at 48762. In situations in which there is a disagreement among the parties, the Office will decide on a case-by-case basis whether additional discovery in an inter partes review is necessary in the interest of justice, or whether additional discovery in a post-grant review is supported by a good cause showing, based on the particular facts of each request, consistent with 35 U.S.C. 316(a)(5) and 326(a)(5). As discussed above, the Garmin factors provide helpful guidance to the parties and assist the Office to achieve the appropriate balance, permitting meaningful discovery, while securing the just, speedy, and inexpensive resolution of every proceeding. The Office plans to add further discussion as to how the Garmin factors have been applied in the Office Patent Trial Practice Guide. Comment 2: Several comments indicated that a patent owner seeking additional discovery regarding the petitioner's product in support of a commercial success non-obviousness argument should have to show that the challenged patent claims read on the petitioner's product, that the product was commercially successful, and that the alleged success resulted from the patented feature. Several other comments, however, suggested that requiring a patent owner to prove such a nexus between the evidence being sought and the claims places too high a burden on the patent owner. One comment urged the Office to allow a patent owner to obtain secondary consideration evidence from the petitioner when the patent owner presents a good-faith argument that there is a nexus between such evidence and the claims, such as by infringement contentions offered in the related district court litigation. Several comments recommended that a patent owner should be permitted to obtain additional discovery from a petitioner when the patent owner demonstrates that the petitioner is reasonably likely to possess evidence of secondary considerations, relaxing the first Garmin Factor. A few other comments suggested that the Office should permit limited discovery of the petitioner's evidence of secondary considerations when the patent owner has presented a sufficient showing of a nexus. Response: The Office recognizes that it is important to provide a patent owner a full and fair opportunity to develop arguments regarding secondary considerations. The Office, therefore, agrees that a conclusive showing of nexus between the claimed invention and the information being sought through discovery is not required at the time the patent owner requests additional discovery. Nonetheless, some showing of nexus is required to ensure that additional discovery is necessary in the interest of justice, in an inter partes review, or is supported by a good cause showing, in a post-grant review. See 35 U.S.C. 316(a)(5) and 326(a)(5); 37 CFR 42.51(b)(2) and 42.224. Notably, as explained in Garmin concerning Factor 1, the mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. Garmin, slip op. at 6. A patent owner seeking secondary consideration evidence from a petitioner should present a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. A mere infringement contention or allegation that the claims reasonably could be read to cover the petitioner's product is generally insufficient, because such a contention or allegation, for example, does not show necessarily that the alleged commercial success derives from the claimed feature. Nor does it account for other desirable features of the petitioner's product or market position that could have contributed to the alleged commercial success. See e.g., John's Lone Star Distrib., Inc. v. Thermolife Int'l, LLC, IPR2014-01201 (PTAB May 13, 2015) (Paper 30). The Office plans to add further discussion on this issue to the Office Patent Trial Practice Guide. Comment 3: One comment recommended that the Office permit the patent owner to serve a limited number of focused interrogatories and requests for production related to secondary considerations, and provide a schedule for the discovery. Response: The Office declines to adopt a mandatory rule regarding additional discovery of secondary considerations, but will continue to entertain the need for such discovery on a case-by-case basis. Moreover, as provided in 37 CFR 42.51(a)(1) and (b)(2), parties may agree to additional discovery, including answering focused interrogatories and production of documents, even prior to institution. The Office also encourages and facilitates such cooperation between parties. See, e.g., Square, Inc. v. REM Holdings 3, LLC, Case IPR2014-00312, slip op. at 2-4 (PTAB Sep. 15, 2014) (Paper 23) (In response to the Board's request, the parties conferred and reached an agreement as to the Patent Owner's focused and narrowly tailored interrogatories and document request.). Balancing fairness concerns with the need to meet statutory deadlines, the Office, at this time, declines to make additional discovery on secondary considerations available as a matter of right, given that all other types of additional discovery may be obtained only upon a showing based on the Garmin factors. Real Party in Interest The Office asked, “Should a Patent Owner be able to raise a challenge regarding a real party in interest at any time during a trial?” 79 FR at 36476. The Office provides guidance below in response to comments generated from these questions, and will revise the Office Patent Trial Practice Guide to reflect this guidance. Comment 1: A number of comments indicated that a patent owner should be able to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding. A few comments also suggested that the Office should encourage or require the patent owner to raise this challenge in its preliminary response, so that the Office could consider this issue when determining whether or not to institute a review and resolve it promptly. Several comments further recommended that a patent owner may raise this challenge after institution if it provides a reasonable explanation as to why it could not have raised such a challenge earlier in the proceeding. One comment, however, opposed any change that would allow a patent owner to challenge the identity of a real party-in-interest at any time during a trial. Another comment also opposed allowing patent owners to make a belated challenge under 35 U.S.C. 312(a) for a petitioner's failure to name all real parties-in-interest. Response: The Office recognizes that it is important to resolve real party-in-interest and privity issues as early as possible, preferably in the preliminary stage of the proceeding prior to institution, to avoid unnecessary delays and to minimize cost and burden on the parties and the resources of the Office. In most cases, the patent owner also recognizes the benefit of raising a real party-in-interest or privity challenge early in the proceeding, before or with the filing of its preliminary response, to avoid the cost and burden of a trial if the challenge is successful. To balance efficiency with fairness, the Office, in general, will permit a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding. Such a position is consistent with the final rule notice. See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents; Final Rule, 77 FR 48680, 48695 (Aug. 14, 2012) (“After institution, standing issues may still be raised during trial. A patent owner may seek authority from the Board to take pertinent discovery or to file a motion to challenge the petitioner's standing.”). With respect to a late challenge that reasonably could have been raised earlier in the proceeding, the Office will consider the impact of such a delay on a case-by-case basis, including whether the delay is unwarranted or prejudicial. The Office also will consider that impact when deciding whether to grant a motion for additional discovery based on a real party-in-interest or privity issue. The Office plans to add further discussion on this issue to the Office Patent Trial Practice Guide. Comment 2: A few comments suggested that the rules should be revised to require both parties to provide certain documents associated with the real party-in-interest or privity of the parties. In particular, the comments recommended requiring the parties to provide the following information: (1) Joint defense group agreements, (2) indemnity agreements, (3) identification of counsel representing a defendant in related litigations, (4) identification of parties participating in the preparation of the petition or in the review, and (5) identification of all parties funding the expenses associated with the review. In contrast, another comment urged the Office not to impose such burdensome mandatory disclosure requirements and indicated that the Office's current practice is appropriate for resolving real party-in-interest and privity issues in a low-cost and efficient manner. Response: As many cases do not involve real party-in-interest or privity disputes, the Office, at this time, does not believe that any benefit resulting from requiring the parties to provide these highly sensitive, and possibly privileged, documents in every case would outweigh the additional cost and burden on the parties and the Office. When a patent owner timely raises real party-in-interest or privity challenges, which are highly fact dependent, the Office will continue to consider the need for additional discovery on a case-by-case basis, taking into account the specific facts in the proceeding to determine whether additional discovery is necessary in the interest of justice, in an inter partes review, or supported by a good cause showing, in a post-grant review. See, e.g., 37 CFR 42.51(b)(2); Garmin, Case IPR2012-00001, slip op. at 7; Office Patent Trial Practice Guide, 77 FR at 48760; Unified Patents, Inc. v. Dragon Intellectual Prop., LLC, Case IPR2014-01252 (PTAB Feb. 12, 2015) (Paper 37) (A non-party does not become a real party-in-interest or privy solely because it is a member of a trade association or joint defense group.). The Office also encourages the parties to confer on the issue of additional discovery early in the proceeding, and attempt to reach an agreement on a reasonable amount of information to exchange, so that the issue may be resolved promptly and efficiently. See 37 CFR 42.51(b)(2) (“The parties may agree to additional discovery between themselves.”). Comment 3: A few comments suggested that patent owners should be able to discover information concerning a real party-in-interest freely at any time. In contrast, several other comments urged the Office to limit discovery to that which is truly necessary, by applying the statutory standards for additional discovery. Response: As discussed above, the Office generally will permit a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a proceeding. The scope of discovery in AIA proceedings, however, differs significantly from the scope of discovery available under the Federal Rules of Civil Procedure in district court proceedings. Because Congress intended AIA proceedings to be a quick and cost-effective alternative to litigation, the statute provides only limited discovery in trial proceedings before the Office. See 35 U.S.C. 316(a)(5) and 326(a)(5); 37 CFR 42.51(b)(2) and 42.224. Under the current practice—applying these statutory standards—the Office frequently has granted discovery requests directed to real-party-in-interest or privity information, where the requests were specific, narrowly tailored, and not unduly burdensome. See, e.g., Arris Group, Inc. v. C-Cation Techs., LLC, Case IPR2015-00635 (PTAB May 1, 2015) (Paper 10) (informative); Zerto, Inc. v. EMC Corp., Case IPR2014-01254 (PTAB Nov. 25, 2014) (Paper 15); Gen. Elec. Co. v. Transdata, Inc., Case IPR2014-01380 (PTAB Nov. 12, 2014); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00488 (PTAB Nov. 5, 2014); Samsung Elects. Co. v. Black Hills Media, LLC, Case IPR2014-00717 (PTAB Oct. 2, 2014); Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453 (PTAB Apr. 23, 2014) (Paper 40); RPX Corp. v. VirnetX Inc., Case IPR2014-00171 (PTAB Feb. 20, 2014) (Paper 33). Comment 4: One comment urged the Office to provide additional guidance regarding issues concerning real party-in-interest or privity, including specific questions and factors that petitioners should consider in determining what entities to identify, which would allow petitioners and patent owners to evaluate these issues early and in a more efficient manner. Response: The Office appreciates the interest in additional guidance on these complex issues. As the Supreme Court has instructed, however, whether an entity is a real party-in-interest is a highly fact dependent question that is not amenable to any bright-line test. Taylor v. Sturgell, 553 U.S. 880, 893-895 (2008). Whether a non-party is a real party-in-interest or privy for a trial proceeding before the Office is a highly fact dependent question that takes into account how courts generally have used the term to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Office Patent Trial Practice Guide, 77 FR at 48759. The Office Patent Trial Practice Guide sets forth a detailed discussion on the relevant common law principles and Federal case law. Further helpful guidance is provided in recent Board decisions. See, e.g., Askeladden LLC v. Sean I. McGhie and Brian Buchheit, Case IPR2015-00122, slip op. at 3-16 (PTAB Mar. 6, 2015) (Paper 30); Zerto, Inc. v. EMC Corp., Case IPR2014-01254, slip op. at 6-15 (PTAB Mar. 3, 2015) (Paper 35); Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., Case IPR2014-01288, slip op. at 6-20 (PTAB Feb. 20, 2015); Unified Patents, Inc. v. Dragon Intellectual Prop., LLC, Case IPR2014-01252, slip op. at 8-13 (PTAB Feb. 12, 2015) (Paper 37); GEA Process Eng'g, Inc. v. Steuben Foods, Inc., Case IPR2014-00041, slip op. at 3-26 (PTAB Dec. 23, 2014) (Paper 140); Samsung Elecs. Co. v. Black Hills Media, LLC, Case IPR2014-00737, slip op. at 3-4 (PTAB Nov. 4, 2014) (Paper 7); First Data Corp. v. Cardsoft LL C, Case IPR2014-00715 (PTAB Oct. 17, 2014); RPX Corp. v. VirnetX Inc., Case IPR2014-00171, slip op. at 6-10 (PTAB July 14, 2014) (Paper 49); Alcon Research, Ltd. v. Dr. Joseph Neev, Case IPR2014-00217, slip op. at 6-7 (PTAB May 9, 2014) (Paper 21); Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-00606, slip op. at 3-12 (PTAB Mar. 20, 2014) (Paper 13). The Office plans to add further discussion on this issue to the Office Patent Trial Practice Guide. Comment 5: A few comments recommended that the Office establish a rule or precedential opinion stating that the existence of a real party-in-interest and privity are determined based on the facts in existence at the time of petition filing. Response: Limiting the inquiry to the time of petition filing would undercut the core functions underlying the requirement to name all real parties-in-interest and privies. Those core functions include resolution of conflicts of interest and ensuring the proper application of statutory estoppel provisions—concerns that persist throughout the course of an AIA trial proceeding. See 35 U.S.C. 315(e)(1) (real party-in-interest or privy of the petition may not “request or maintain” a proceeding); 35 U.S.C. 325(e)(1) (same). As real party-in-interest and privity issues are highly fact dependent, in certain situations the issue may involve supporting evidence that comes into existence after the filing of a petition. See, e.g., GEA Process Eng'g, Inc. v. Steuben Foods, Inc., Case IPR2014-00041 (PTAB Dec. 23, 2014) (Paper 140, Public Version) (finding that a non-party who paid the Petitioner's legal fees for the inter partes review is a real party-in-interest, and rejecting the argument that post-filing funds cannot retroactively change the facts as of the filing date, because “[t]ypically, legal bills are billed and paid for after the services have been rendered”). Therefore, such bright-line rules as suggested by the comments would not be in the interest of justice and are not adopted. Comment 6: A comment urged the Office to permit petitioners to correct the identification of real parties-in-interest without affecting the filing date if a “good faith attempt” was made to satisfy 35 U.S.C. 312(a). Response: The statute requires a petition to identify all real parties-in-interest without qualification. See 35 U.S.C. 312(a); see 37 CFR 42.8 and 42.104. In the situation where the failure to identify a real party-in-interest was a mere clerical error, the petitioner may correct the petition without affecting the filing date. See, e.g., 37 CFR 42.104(c); Coleman Cable, LLC v. Simon Nicholas Richmond, Case IPR2014-00935 (PTAB Aug. 28, 2014) (Paper 12). The Office is unable, however, to allow for the correction of any other such errors without changing the filing date because of the statutory requirement. Comment 7: A comment urged the Office to confirm that the petitioner bears the burden of producing evidence that it has standing, as well as the burden of persuasion on the issue. Response: As discussed previously, additional discovery may be authorized where patent owner raises sufficient concerns regarding the petitioner's identification of real parties-in-interest. Several recent decisions have acknowledged that the ultimate burden of proof on the issue lies with the petitioner. See, e.g., Askeladden, slip op. at 8 (Paper 30); Zerto, slip op. at 6-7 (Paper 35); Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at 6-8 (PTAB Jan. 6, 2015) (Paper 88); Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at 2-7 (PTAB Feb. 23, 2015) (Paper 91). This allocation of the burden acknowledges that a petitioner is more likely than a patent owner to be in possession of, or have access to, evidence relevant to the issue. Zerto, slip op. at 6-7. The Office plans to add further discussion on this issue to the Office Patent Trial Practice Guide. Multiple Proceedings The Office asked a series of questions relating to how multiple proceedings, such as an AIA trial, reexamination, or reissue proceeding, before the Office involving the same patent should be coordinated, including whether one proceeding should be stayed, transferred, consolidated, or terminated in favor of another. The questions are replicated below, followed by the comments responsive to those questions and the Office's responses to the comments. Question 7: How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) Two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding? 79 FR at 36476. Comments: Multiple commenters recommended that the Board continue to exercise its discretion, on a case-by-case basis, to stay, transfer, consolidate, or terminate multiple proceedings involving the same patent claims. Several commenters urged the Board to consolidate multiple proceedings involving the same or related patents. Commenters urged the Board to manage multiple AIA proceedings by manipulating the dates for the patent owner's preliminary response. Several commenters suggested that the Board should delay the time period for filing the patent owner's preliminary response to a second petition, “so as to effectively stay the filing of” that response, until after the first-filed petition is resolved by termination or a final written decision. One commenter remarked that this effective stay of the time for filing the patent owner's preliminary response in a second proceeding is especially appropriate where the proceeding, instituted on the first-filed petition, is near completion. Another commenter proposed that, where a second petition is filed before the date on which the patent owner's preliminary response is filed in the first proceeding, the patent owner's preliminary response in the first proceeding should be reset to three months from the notice of filing date accorded the second petition. The commenter also urged that, under those circumstances, scheduling and briefing should be consolidated in the two proceedings. The same commenter proposed that the Board should stay all activity on a second petition that is filed after trial is instituted on a first petition. Several commenters proposed requiring petitioners, who file a petition challenging the same patent claims at issue in an earlier-filed petition, to identify what issues were previously raised. Commenters also advocated requiring such petitioners to state whether they are amenable to joinder with the earlier proceeding. On that point, one commenter urged that duplicative petitions, filed after the deadline for joinder, “should be terminated at an early stage to conserve Patent Owner costs and [Board] resources.” Another commenter stated that, “[f]or consolidated AIA trials involving the same patent with at least one challenged claim in common, the current rules that the Board uses for joinder seem to be working well.” Some commenters urged that duplicative petitions, filed outside the permissible period for joinder, should not be granted. Response: The current rules afford the Board broad discretion to manage multiple proceedings by tailoring the solution to the unique circumstances of each case and, thereby, optimizing efficiencies and promoting fair results in each case. See Prism Pharma Co. v. Choongwae Pharma Corp., IPR2014-00315 (PTAB July 8, 2014) (Paper 14) (informative) (denying institution of inter partes review based on second-filed petition that was based on the same prior art and same arguments previously considered by the Office during prosecution of the patent being challenged); Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00487 (PTAB Sept. 11 2014) (Paper 8); Unified Patents, Inc. v. PersonalWeb Techs., LLC, Case IPR2014-00702 (PTAB July 24, 2014) (Paper 13); Unilever, Inc. v. Procter & Gamble Co., Case IPR2014-00506 (PTAB July 7, 2014) (Paper 17); Medtronic, Inc. v. Robert Bosch Healthcare System s, Inc., Case IPR2014-00436 (PTAB June 19, 2014) (Paper 17); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case IPR2013-00324 (PTAB Nov. 21, 2013); ZTE Corp. v. ContentGuard Holdings, Inc., Case IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12). The Board will continue to take into account the interests of justice and fairness to both petitioners and patent owners where multiple proceedings involving the same patent claims are before the Office. The Board also must consider its ability to meet the statutory deadlines imposed by Congress on AIA trials. The Board agrees with the commenters that the timing of the patent owner's preliminary response may be altered, when helpful and fair in an appropriate case. No rule change is needed to accomplish that goal. The Board has considered the comment that second petitioners should self-identify repetitive challenges, and state their amenability to joinder. As a practical matter, the Board is well-positioned to determine whether a second petition raises the same or substantially the same challenges presented in a first petition that is identified as a related matter. The Board is also adept at determining whether a grant of the second petition, with joinder, serves the interests of fairness, efficiency, and economy of process. In addition, pursuant to 37 CFR 42.8(b)(2), petitioners are required to identify other proceedings involving the same challenged patent, and petitioners are encouraged to identify any substantive similarities with other proceedings in the petition. No rule change requiring petitioners to self-identify repetitive challenges is warranted at this time. The Board agrees with the commenters that a factor which may be relevant in appropriate cases is whether the petitioner in a later-filed proceeding is amenable to joinder with an earlier-filed proceeding involving the same patent claims. See, e.g., Motorola Mobility LLC v. Softview LLC, IPR2013-00257 (PTAB June 20, 2013) (Paper 10) (order granting joinder where a second petitioner neither introduced new grounds of unpatentability nor raised procedural issues that would delay the schedule set for the first proceeding). The Board will continue to take account of all factors, bearing on the propriety and feasibility of joinder, based on the particular facts of the involved proceedings. Based on the comments, the Office determines that the current rules provide a workable framework for the Board to manage multiple proceedings that involve the same patent claims. No revision of the rules for managing such proceedings is necessary at this time. Question 8: What factors should be considered in deciding whether to stay, transfer, consolidate, or terminate an additional proceeding involving the same patent after a petition for AIA trial has been filed? 79 FR at 36,476. Comments: Some commenters suggested that the Office promulgate new rules that define the factors that the Office will take into account when considering multiple petitions directed to the same patent claims. Commenters advocated for the application of a variety of factors, which fall into three main categories: (1) The impact on scheduling and the Office's ability to meet the deadlines imposed by Congress in AIA proceedings; (2) prejudice to the patent owner; and (3) prejudice to the petitioner. Response: The issues raised by Question 8 are closely related to the issues raised by Question 7. The interests of fairness, speed, efficiency, and economy are served by retaining the Office's ability to balance the competing interests of the petitioner and patent owner, where multiple petitions are filed that challenge the same patent claims. Managing multiple petitions demands highly fact-specific inquiries, and the Office requires broad discretion to craft results that are tailored to the particular circumstances presented in each case. The Office agrees with the comments that recognize the issues raised by multiple petitions are best resolved on a case-by-case basis. The Office recognizes that approaching each case on its own facts raises consistency concerns that could be ameliorated by identifying a set of factors that apply in all cases. The Office agrees with the comments, however, suggesting that the interests, which bear on the propriety of a stay, transfer, consolidation, or termination where multiple proceedings are directed to the same patent claims, are best served by allowing the constellation of relevant factors to evolve gradually, tethered to the facts of individual cases. A restrained evolution, on a case-by-case basis, promotes fair and rational results in each case, and equips the Office with necessary flexibility to customize resolutions suitable for each particular case. The Office will develop relevant factors, tethered to specific facts raised in particular cases, through its body of case law. Given the still-evolving nature of AIA proceedings, the Office believes that this gradual approach is prudent and preferred over a premature attempt to establish a rule or factors divorced from particular facts raised in a particular case, which may not address the relevant concerns in every case. The Office plans to add further discussion on this issue to the Office Patent Trial Practice Guide. Question 9: Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be stayed in favor of an AIA trial? If a stay is entered, under what circumstances should the stay be lifted? 79 FR at 36476. Comments: The Office received comments in favor of staying a copending reissue or reexamination. Commenters proposed that a stay for copending proceedings be determined on a case-by-case basis, with other commenters proposing that the stay be imposed upon institution of trial on the same patent. Another commenter proposed that a copending reissue or reexamination be stayed automatically, unless there was a showing of “good cause,” which includes factors such as avoiding: (a) Inconsistent decisions by the Office; (b) duplicative work for the Board; and (c) disruption to the trial schedule. Other factors to consider in granting a stay, according to another commenter, include the statutory deadlines of the proceeding, the issues raised in the multiple proceedings, the parties involved, the likelihood of a reissue application being granted, and whether the decision adversely affects a party's ability to reach a timely conclusion on a patentability issue. Another commenter provided additional factors to consider in granting a stay, such as the stage where amendments are possible, whether claim construction is inconsistent with the claim construction applied during trial, and agreement of the parties regarding a stay. For those commenters favoring a stay, the circumstances regarding when a stay should be lifted ranged from the rendering of a final written decision to when appeal to the Federal Circuit has been exhausted. Other commenters have requested that the Office clarify that it will not terminate the reexamination or reissue once the final written decision issues, so that a patent owner may pursue claim amendments in those proceedings. In the circumstances when a copending reexamination or reissue is not stayed and when there is no overlap of claims involved in the copending proceedings and the instituted trial, a commenter stated that the Office should preclude the presentation of new amended claims in the copending proceedings involving the same patent because a “sequential,” rather than a “simultaneous,” evaluation of the claims is consistent with the legislative history of the AIA. Other commenters proposed that the Office consider allowing the reexamination and reissue to continue in parallel with or before the instituted trial. One commenter stressed that the purpose of a reissue is to correct errors, and therefore the remedial nature of the proceeding counsels against waiting for a trial to conclude. The same commenter offered that staying a reexamination is unjust to the patent owner because reexaminations are given “special dispatch” under 35 U.S.C. 305, a statutory requirement that remained unchanged with the passage of the AIA. Because in an instituted trial only one amendment is allowed by motion, the same commenter stated that a stay would preclude examination of claims amended in a reexamination or reissue to address the newly cited prior art or correct an error that was not present or addressed during the original examination of the patent. In particular, one commenter stressed that a reexamination should be allowed to run its course, and in any event, because an AIA proceeding would replace reexamination, copending AIA and reexamination would not be a problem much longer. In the event a reexamination is not stayed, one commenter suggested that the Board's claim construction should be applied in the reexamination, or briefing on claim construction for the reexamination should be allowed in light of the claim construction involved in the trial. Response: The Office has been determining whether to stay a reexamination or reissue on a case-by-case basis, and agrees with the commenters advocating that various factors should be considered, including the overlap of issues presented in the copending proceeding and the stage of the copending proceeding to avoid duplicative work for the Office. See, e.g., Kaiser Aluminum v. Constellium Rolled Prods. Ravenswood, LLC, IPR2014-01002 (PTAB Feb. 19, 2015) (Paper 25) (denying request to stay a reexamination on the same patent and some of the same references because the proceeding involved evidence different from the evidence presented in the inter partes review (IPR) and the reexamination was not sufficiently underway such that it would conclude before a final decision would issue in the IPR); Chicago Mercantile Exch., Inc. v. 5th Market, Inc., CBM2014-00114 (PTAB Jan. 9, 2015) (Paper 20) (denying request to stay copending reexamination because claims amended in reexamination were not at issue in the instituted covered business method review, where Patent Owner did not file a motion to amend, and finding that parallel proceedings would not result in duplication of efforts at the Office because the instant proceedings did not involve a complete overlap of claims); Geortek, Inc. v. Knowles Elecs., LLC, IPR2013-00614 (PTAB Nov. 13, 2013) (Paper 11) (granting Patent Owner's motion to stay copending reexamination that had been ongoing for three years where Patent Owner argued that stay would prevent inconsistent results with regard to potential amendments of the same claims challenged in the inter partes review); Google, Inc. v. Grandeye, Ltd., IPR2013-00548 (PTAB Sept. 30, 2013) (Paper 7) (granting unopposed motion to stay copending reexamination by Patent Owner because concurrent proceedings would duplicate efforts within the Office and could potentially result in inconsistencies among the proceedings, especially in light of amendments of the challenged claims in the reexamination). The Office is not proposing changes at this time to the Rules or to the Office Patent Trial Practice Guide to give guidance regarding the timing on lifting a stay or how to proceed in a copending reexamination or reissue that is not stayed. These determinations have been proceeding appropriately on a case-by-case basis, noting, among many factors, the impact of the concurrent reexamination on the trial and whether the trial has concluded. See, e.g., GEA Process Eng'g, Inc. v. Steuben Foods, Inc., IPR2014-00043 (PTAB Feb. 19, 2015) (Paper 121) (ordering lift of stay of a copending reexamination after the trial was terminated and timing for filing a request for rehearing had expired, and ordering that Patent Owner provide a copy of the Decision on Institution to the Central Reexamination Unit for consideration in light of alleged inconsistencies); Gnosis S.p.A. v. Merck & CIE, IPR2014-00117 (PTAB Feb. 5, 2015) (Paper 74) (ordering lift of stay of a copending reexamination after issue of a final written decision, and in consideration of the following: (1) The reexamination involved overlapping claims; (2) Patent Owner did not amend claims involved in inter partes review; (3) added claims were alleged to be narrower in scope; and (3) Examiner in the reexamination had issued a final rejection); Avaya Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00071, slip op. at 31-32 (PTAB May 22, 2014) (Paper 103) (lifting stay, sua sponte and after final written decision issued, of a reexamination involving a non-asserted claim and different prior art presented in the inter partes review). The Office will continue to determine, on the facts of each case in which there is a copending reexamination or reissue, whether a stay is warranted or a stay should be lifted under the circumstances of each case. Question 10: Under what circumstances, if any, should an AIA trial be stayed in favor of a copending reexamination proceeding or reissue proceeding? If a stay is entered, under what circumstances should the stay be lifted? 79 FR at 36476. Comments: The Office received comments in favor of not staying AIA trials in favor of a copending reexamination or reissue. One reason provided for not staying the trial is that statutory deadlines apply to the trials. One commenter observed an exception that may warrant a stay of AIA proceedings, i.e., to account for when the copending reexamination or reissue was not stayed and a new claim is about to issue. In that circumstance, the commenter suggested that a limited stay should be granted to allow a petitioner to raise the new claim in the pending trial. Another commenter also stated that limited circumstances may warrant a stay, such as when the copending reexamination is in the late stages of appeal and there is significant overlap in claims between the trial and the copending proceeding. This same commenter stressed that if the parties agree that patentability should be determined first in the reexamination, a stay of the trial may be warranted. Other comments favored the request for and grant of a stay of the trial in favor of the copending reexamination or reissue. One commenter noted that such a stay should be granted when the copending reexamination or reissue is near completion, and another commenter stressed that the stay may be implemented before the trial is instituted such that the statutory deadlines are not impacted. Another commenter provided that denial of institution should result for grounds with claims that are at issue in a copending reexamination or reissue, where amended claims were filed in the copending proceeding before the deadline for the Board to determine institution. To clarify whether the Board would have jurisdiction over such a trial, the same commenter advocated revising the Office Patent Trial Practice Guide to include clarification regarding the timing on when a notice of intent to issue a reexamination certificate or notice of allowance of a reissue would be effective. Response: The Office will continue to proceed with the determination whether to institute trial on a case-by-case basis with no delay of the proceedings unless warranted by the facts or circumstances of the case. See, e.g., Intromedic Co., Ltd. v. Given Imaging Ltd., Case IPR2015-00579 (PTAB Aug. 5, 2015) (Paper 9) (denying institution of review because the only claim being challenged by Petitioner has been amended in the copending reexamination, and the advanced stage of the reexamination involving the same parties); Juniper Networks, Inc. v. Linex Techs., Inc., IPR2014-00595 (PTAB Sept. 26, 2014) (Paper 19) (denying institution of inter partes review because a Reexamination Certificate in a copending reexamination had issued and reexamination had concluded with all original claims amended and new claims issued). The Office agrees with the commenters that stress that a statutory deadline does not favor staying trials in favor of a copending reexamination or reissue, which have no statutory deadlines. See, e.g., Mercedes-Benz USA, LLC v. Velocity Patent, LLC, IPR2015-00290 (PTAB Jan. 21, 2015) (Paper 9) (denying authorization for motion to stay inter partes review in favor of a copending reexamination because the argument that new claims would issue there first and inter partes review would be amended to include those claims were not sufficient reasons to lengthen the pendency of the inter partes review, which is designed to secure the just, speedy, and inexpensive resolution of the dispute); see also American Simmental Assn. v. Leachman Cattle of Co., LLC, PGR2015-00003 (PTAB Dec. 14, 2014) (Paper 4) (denying request to stay institution of post-grant review (PGR) in favor of pending reissue because of the status of the PGR, Patent Owner had not sought amendment or cancellation of the claims challenged in the PGR, and the Office had not taken any substantive action on the reissue application). At this time, the Office does not propose changes to the Rules or the Trial Practice Guide to list specific circumstances under which a party may show that a stay of either a decision on institution or a trial may be appropriate. The Office will continue to decide motions to stay proceedings according to the facts and circumstances of each case. Question 11: Under what circumstances, if any, should a copending reexamination proceeding or reissue proceeding be consolidated with an AIA trial? 79 FR at 36477. Comments: The Board received several comments concerning the circumstances under which a copending reexamination or reissue should be consolidated with an AIA trial. Those circumstances fall roughly into two categories. The first category of comments indicated that consolidation of an AIA trial with copending reexaminations or reissues was impractical and that rules requiring such consolidation could, in some cases, prejudice patent owners. The second category of comments provided several factors that should be considered and weighed by the Board in determining whether to consolidate such proceedings. Those factors included: (1) Type of additional proceeding; (2) time between filing date of initial proceeding and additional proceeding; (3) stage of initial proceeding; (4) duration of additional proceeding; (5) scope of each proceeding; (6) third party filers (same, different); (7) relation between third party filer of additional proceeding and filer of initial proceeding; (8) number of total proceedings filed against the patent; (9) whether the additional proceeding is a reexamination: ex parte reexamination should not be transferred to PTAB because patent owner would lose certain procedural mechanisms such as ability to interview case; (10) whether pending district court litigation has been stayed pending resolution of the reexamination; (11) whether validity of claims at issue in AIA trial is currently on appeal to the Federal Circuit; (12) express interests of the parties in the proceedings; (13) issues raised in the different proceedings; (14) ability of Board to reach a timely conclusion of a patentability issue in any proceeding; and (15) saving of costs and resources gained by the parties and the Board by consolidation, for example, by coordination of procedures common to the proceedings. Response: The Office appreciates the comments and has been considering the above factors, among others, in deciding requests to consolidate a copending reexamination or reissue with AIA trials. See, e.g., Mercedes-Benz USA, LLC et al. v. Velocity Patent LLC, Case IPR2014-01247 (PTAB Dec. 15, 2014) (Paper 12) (denying Petitioner's request to file a motion to consolidate AIA trial proceeding with a related reexamination, where the only claims at issue in the AIA trial proceeding were added in the reexamination, and Patent Owner cancelled those claims in the reexamination); GEA Process Engineering, Inc. v. Steuben Food, Inc., Case IPR2014-00041, slip. op. at 3-5 (PTAB Dec. 6, 2013) (Paper 13) (denying Petitioner's motion to consolidate AIA trial proceeding with a related reexamination, where Patent Owner stipulated to not amend claims in the related reexamination); GEA Process Engineering, Inc. v. Steuben Food, Inc., Case IPR2014-00051, slip. op. at 2-3 (PTAB Dec. 6, 2013) (Paper 12) (denying as moot Petitioner's motion to consolidate AIA trial proceeding with a related reexamination, where the reexamination had terminated and the reexamination certificate had issued). The Office agrees with the commenters who noted that there are many difficulties in consolidating copending reexaminations or reissues with AIA trials, and that all relevant factors, including but not limited to those set forth above, should be taken into consideration. The Office has performed similar analyses weighing a myriad of factors in analogous contexts, for example, in determining whether to stay a copending reexamination or reissue in favor of an AIA trial, or vice versa. See, e.g., Responses to Questions 9 and 10 set forth above. The Office does not propose to change the Rules or the portion of the Office Patent Trial Practice Guide pertaining to consolidation of a copending reexamination or reissue with AIA trials at this time. The Office will continue to determine on the facts of each case, in which consolidation is requested, whether a particular request sets forth facts sufficient to warrant consolidation of a copending reexamination or reissue with AIA trials. Question 12: How should consolidated proceedings be handled before the USPTO? Consolidated proceedings include, for example: (i) Consolidated AIA trials; (ii) an AIA trial consolidated with a reexamination proceeding; or (iii) an AIA trial consolidated with a reissue proceeding? 79 FR at 36477. Comments: The Office received comments suggesting ways in which consolidated proceedings should be conducted. Suggestions included: (1) Multiple AIA trials concerning the same (or related) patents (or parties) should be consolidated or handled by the same panel; (2) consolidated proceedings should follow the district court model with the same schedule applying to the proceedings; (3) a petitioner should be required to select a single lead and backup counsel, but taking into consideration the interests of the parties, in some circumstances the Board may determine coordination should not be required; and (4) panels should consider adjusting page limits in cases where different parties may be asserting different positions. Response: The Office agrees with the commenters that conducting consolidated proceedings in the manner set forth in the comments above may be appropriate. The Board has consolidated inter partes reviews involving the same parties and the same patent into a single proceeding where appropriate. See Ford Motor Co. v. TMC Fuels Injection System, LLC, Case IPR2014-00272 (PTAB Jun 26, 2014) (Paper 12) (consolidating IPR2014-00272, which was instituted on challenges under 35 U.S.C. 103, with IPR2014-00273, which was instituted on different challenges to the same claims under 35 U.S.C. 102 and 103 in which some of the applied references were common to both proceedings). In some cases where different parties have been joined to a proceeding, the panel has provided opportunities for limited additional briefing on issues where the petitioners may take different positions. See, e.g., Motorola Mobility LLC v. Softview LLC, Case IPR2013-00257 (PTAB June 20, 2013) (Paper 10) (joining proceeding to IPR2013-00004 and providing for consolidated filings and limited separate filings by Petitioners on points of disagreement only). The Office received a further comment that claim amendments should be allowed if an AIA trial is consolidated with a copending reexamination or reissue. The Office notes that claim amendments are available currently in all of these proceedings. Insofar as the commenter may be suggesting that all claim amendments be entered as a matter of right in a consolidated proceeding, the Office disagrees, and instead leaves entry of claim amendments to be determined by the panel conducting the consolidated proceeding in accordance with the statutory and regulatory framework applicable to each of the proceedings. Some commenters suggested that the Board has coordinated and should continue coordinating schedules of multiple related proceedings without formally consolidating the proceedings, for example, so as to allow different petitioners flexibility to pursue different arguments and to allow patent owner all of its allotted pages to respond to those different arguments. The Office has been coordinating schedules of multiple related proceedings without formally consolidating the proceedings, on a case-by-case basis, and agrees with the commenters that such practices should be continued, as appropriate. See, e.g., Taiwan Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-001089, slip. op. at 2-3 (PTAB Feb. 2, 2015) (Paper 17) (setting forth procedure for consolidated trial schedule, filings, and discovery in multiple related proceedings). The Board has also coordinated hearings in related cases and has scheduled hearings in related cases to occur on consecutive days in related cases. See Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, Case IPR2014-00709 (PTAB Dec. 10, 2014) (summary of initial conference during which it was decided that IPR2014-00709, -00711, and -00718 would be heard together, IPR2014-00737 and -00740 would be heard together, IPR2014-00718 and -00721 would be heard together, and IPR2014-00717 and -00735 would be heard together, on consecutive days). See, e.g., Responses to Question 7 set forth above. The Office does not propose to change the Rules or the portion of the Office Patent Trial Practice Guide pertaining to handling of consolidated proceedings. The Office will continue to determine based on a case-by-case basis the proper manner in which such consolidated proceedings should be handled. Question 13: Under what circumstances, if any, should a petition for an AIA trial be rejected because the same or substantially the same prior art or arguments previously were presented to the USPTO in a different petition for an AIA trial, in a reexamination proceeding or in a reissue proceeding? 79 FR at 36477. Comments: The Board received many comments in favor of denying AIA petitions that raise the same or substantially the same prior art or arguments that were raised in an earlier-filed petition, whether raised by the same or a different petitioner. One commenter stated that the Board “should aggressively exercise” its discretion to deny cumulative or overlapping grounds in multiple proceedings, “even when different parties file petitions.” Some commenters advocated denial of serial petitions filed by the same real party-in-interest. Other commenters stated that the Board should consolidate multiple petitions where feasible. Several commenters suggested a general policy of “one and done” to duplicative petitions, to prevent harassment of patent owners, minimize costs, and ensure quiet title of patent rights. Those same commenters also recommended that the citation of new art in a subsequent petition should create a rebuttable presumption that substantially the same prior art or arguments are not raised in that petition. Commenters also urged the Board to apply principles of redundancy, across different petitions, to deny duplicative grounds raised in later-filed petitions. Other commenters stated that “[t]he Board should treat each petition independently,” and that a different petitioner, not in privity with the first petitioner, should be permitted to raise the same prior art in a subsequent petition. Some commenters proposed that duplicative petitions should not be denied where arguments in a later-filed petition differ in scope from those presented in an earlier-filed petition. Another commenter, by contrast, proposed a rule of “horizontal stare decisis” that would require treating a first decision on patentability as “binding law of the case” in subsequent proceedings, challenging the same patent claims, based on the same or substantially the same prior art or arguments. Response: The Office has and will continue to balance the interests of petitioners, who seek to present new prior art and arguments in a later-filed petition, against patent owners' interest in preventing harassment that takes the form of repetitive, serial petitions that challenge the same patent claims. The Office is best able to balance those competing interests by approaching multiple petitions, which may raise the same or substantially the same prior art or arguments against the same patent claims, on a case-by-case basis, taking into account the unique facts and relative equities raised in each particular proceeding. The comments do not suggest a need for a rule change at this time. The current rules provide the Board with broad discretion adequate to take all relevant factors into account, when deciding whether to proceed on a petition that challenges the same patent claims at issue in an earlier-filed petition. Nor is a rule change necessary to enumerate the factors that the Board may take into account when making case-specific determinations, regarding the degree of overlap between the prior art and arguments raised in multiple petitions. The Office believes that the Board's current practice should continue to allow those factors to develop in its growing body of case law, tethered to the facts of particular proceedings, with such decisions of the Board providing guidance to practitioners. Issued decisions already provide useful guidance in that regard. The Board has considered many factors, including, for example: (1) The degree of overlap between the prior art and arguments raised in the multiple petitions; (2) the identity of the petitioner in the later-filed proceeding; (3) whether the petitioner in the later-filed proceeding uses a prior decision on institution as a roadmap to refine and recycle arguments presented in an earlier-filed petition; (4) whether the circumstances surrounding the later-filed petition raises the specter of patent owner harassment; and (5) whether granting the later-filed petition is in the interests of justice. See, e.g. , ZTE Corp. v. ContentGuard Holdings Inc., IPR2013-00454 (PTAB Sept. 25, 2013) (Paper 12) (informative) (denying institution of inter partes review of a patent based on substantially the same prior art and same arguments presented previously in an earlier-filed petition filed by the same Petitioner for which institution was in-part denied, and citing 35 U.S.C. 325(d), to determine that “[a] decision to institute review on some claims should not act as an entry ticket, and a how-to guide, for the same Petitioner who filed an unsuccessful joinder motion, and is outside of the one-year statutory period, for filing a second petition to challenge those claims which it unsuccessfully challenged in the first petition”); Medtronic, Inc. v Robert Bosch Healthcare Systems, Inc., IPR2014-00436 (PTAB June 19, 2014) (Paper 17) (informative) (denying institution of inter partes review where petition was based on redundant prior art and substantially the same arguments that were presented previously in an earlier-filed petition challenging the same patent and filed by a different Petitioner, but where the Petitioner in the later-filed case acknowledged that it was a real party-in-interest in the earlier-filed proceeding, due to its acquisition of the Petitioner in the earlier-filed proceeding); Unilever v. Procter & Gamble Co., IPR2014-00506 (PTAB July 7, 2014) (Paper 17) (informative) (denying institution of inter partes review based on a later-filed petition, filed by same Petitioner and on same patent as an earlier-filed petition, where the later-filed petition attempted to correct deficiencies in the earlier-filed petition for claims for which earlier trial was not instituted); Dell Inc. v. Electronics and Telecomms. Res. Inst., Case IPR2015-00549 (PTAB March 26, 2015) (Paper 10); Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, Case IPR2014-01080 (PTAB Oct. 31, 2014) (Paper 17); Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 (PTAB July 8, 2014) (Paper 14). The Office recognizes that a “one and done” approach to multiple petitions may favor patent owners by diminishing the opportunity for harassment and ensuring some certainty for patent rights. In that regard, the Board already has applied its broad discretion to curtail multiple challenges against a patent as described above. The competing interests of fairness to petitioners and the public interest, however, favor retaining the Office's discretion to grant or deny multiple petitions, rather than imposing a rigid rule that would require denial and, in effect, bind all potential challengers to the outcome of a first-filed petition, regardless of the facts and equities that surround the filing of the subsequent petitions. The Office also acknowledges that petitioners may benefit from a “rebuttable presumption” that would render inapplicable the provisions of section 325(d), where a subsequent petition raises even one prior art reference that was not raised in the first-filed petition. Such an approach, however, unfairly would provide petitioners a fail-safe mechanism for avoiding the provisions of the statute, by filing serial petitions that add a single new reference to support the same grounds raised in an earlier petition. Such an approach fails to take into account the unfairness, including the potential for harassment, to patent owners when “substantially the same” prior art is raised sequentially against the same patent claims. The Office's discretion to grant or deny subsequent petitions, by viewing all relevant circumstances as a whole, on a case-by-case basis, is preferable to setting down a rigid rule. Within the existing framework of the statute and rules, the Office has discretion to consider the relative scope of the challenges raised in multiple petitions. If a petition raises challenges that are based on the same or substantially the same prior art as a prior petition, but advances arguments of different scope, the Office has discretion to deny or grant the second petition based on the totality of facts presented in the case. A rule of “horizontal stare decisis” would, therefore, abolish the Board's discretion, especially where two cases do not present the same facts or identical considerations. The Office will to continue to apply the existing framework, based on discretion to customize a result based on the facts and equities of each case. No rule changes are indicated at this time. Extension of One Year Period To Issue a Final Determination The Office asked, “What circumstances should constitute a finding of good cause to extend the 1-year period for the Board to issue a final determination in an AIA trial?” 79 FR at 36477. Comments: The Office received comments in favor of the current strict adherence to the one-year statutory period and advocating that the granting of extensions should be rare. Many of these commenters stated that the Office should “continue to strive for completion of each trial in one year,” the “good cause” bar should be very high, and extensions of the deadline should be “rare” and used only “in the most extreme circumstances” such as “where unforeseen circumstances make it impossible to complete proceedings in a fair manner.” These same commenters stressed that “one of the most important benefits of [these proceedings]” and “a major driver in the widespread adoption of the AIA procedures” is that the Office renders a decision within one year. The commenters warned about eviscerating these benefits by a “systematic extension of the one-year period.” The Office also received comments advocating that the Office make more generous use of the option to extend the one-year statutory period under certain circumstances. For example, commenters proposed that an extension of the one-year deadline would be appropriate under the following circumstances: (1) “where a comparative test(s) are deemed necessary;” (2) where there is “delay by the party not seeking the extension;” (3) “if there is a later-filed AIA proceeding on the same patent that will not reach a final decision until after the first proceeding is concluded;” (4) “where additional discovery is sought . . . in regard to secondary considerations or real party in interest;” (5) “in situations in which more time is needed to consider amended claims;” and (6) “where an irreplaceable, key participant becomes unexpectedly unavailable.” Many commenters also suggested that an extension would be appropriate in complex cases “in the interests of justness, fairness to the parties” and “ [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A2015-20227. Public record. Not legal advice.