The AIA provides certain minimum requirements for each of the proceedings. Provided below is a brief overview of these requirements.

Proceedings begin with the filing of a petition to institute a trial. The petition must be filed with the Board consistent with any time period required by statute and be accompanied by the evidence the petitioner seeks to rely upon. See, e.g., 35 U.S.C. §§ 135(a), 311(c); 37 C.F.R. § 42.3. For IPR, PGR, and CBM, the patent owner is afforded an opportunity to file a preliminary response. 35 U.S.C. §§ 313, § 323.

The Board, acting on behalf of the Director, may institute a trial where the petitioner establishes that the standards for instituting the requested trial are met, taking into account any preliminary response filed by the patent owner. Conversely, the Board may not authorize a trial where the information presented in the petition, taking into account any patent owner preliminary response, fails to meet the requisite standard for instituting the trial. See, e.g., 35 U.S.C. §§ 314, 324. Where there are multiple matters in the Office involving the same patent, the Board may determine how the proceedings will proceed, including providing for a stay, transfer, consolidation, or termination of any such matter. See, e.g., 35 U.S.C. §§ 315, 325.

The AIA requires that the Board conduct AIA trials and that the Director prescribe regulations concerning the conduct of those trials. 35 U.S.C. §§ 6, 135, 316, 326. For example, for IPR, PGR, and CBM, the AIA mandates the promulgation of rules including motions to seal, procedures for filing supplemental information, standards and procedures for discovery, sanctions for improper use of the proceeding, entry of protective orders, and oral hearings. See, e.g., 35 U.S.C. §§ 316(a), 326. Additionally, the AIA mandates the promulgation of rules for IPR, PGR, and CBM concerning the submission of a patent owner response with supporting evidence and allowing the patent owner a motion to amend the patent. Id. As required by the AIA, the Office has promulgated rules governing the conduct of trials before the Board. See generally 37 C.F.R. § 42.1 et seq.

A petitioner and a patent owner may terminate the proceeding with respect to the petitioner by filing a written agreement with the Board, unless the Board has already decided the merits of the proceeding before the request for termination is filed. See, e.g., 35 U.S.C. §§ 317, 327. If no petitioner remains in the proceeding, the Board may terminate the review or proceed to a final written decision. For derivation proceedings, the parties may arbitrate issues in the proceeding, but nothing precludes the Office from determining the patentability of the claimed inventions involved in the proceeding. 35 U.S.C. § 135. Where a trial has been instituted and not dismissed, the Board will issue a final written decision with respect to the challenged claims. 35 U.S.C. §§ 135, 318, 328.

For IPR, PGR, and CBM, the AIA requires that the Office consider the effect of the regulations on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete the proceedings. 35 U.S.C. §§ 316, 326. In developing the general trial rules, as well as the specific rules for the individual proceedings, the Office has taken these considerations into account. Further, the specific rules for the individual proceedings take into account the jurisdictional and timing requirements for the particular proceedings.

C. Electronic Filing

D. Mandatory Notices

The rules require that parties to a proceeding provide certain mandatory notices, including identification of the real parties-in-interest, related matters, lead and back-up counsel, and service information. 37 C.F.R. § 42.8. Where there is a change of information, a party must file a revised notice within 21 days of the change. 37 C.F.R. § 42.8(a)(3)

F. Discovery

The proceedings begin with the filing of a petition that lays out the petitioner’s grounds and supporting evidence for the requested proceeding. Additional relief in a proceeding must be requested in the form of a motion. 37 C.F.R. § 42.20(a).

Generally, the Director may institute a proceeding where a petitioner meets the threshold standards. There is a different statutory threshold standard for institution of each type of proceeding. Each of the statutory threshold standards is summarized below.

(a) Inter Partes Review: 35 U.S.C. § 314(a) provides that the Director may not authorize institution of an inter partes review, unless the Director determines that the information presented in the petition filed under 35 U.S.C. § 311, and any response filed under 35 U.S.C. § 313, shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. The “reasonable likelihood” standard is a somewhat flexible standard that allows the Board room to exercise judgment.

(b) Post-Grant Review: 35 U.S.C. § 324(a) provides that the Director may not authorize institution of a post-grant review, unless the Director determines that the information presented in the petition filed under 35 U.S.C. § 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable. The “more likely than not” standard requires greater than 50% chance of prevailing. In addition, 35 U.S.C. § 324(b) provides that the determination required under 35 U.S.C. § 324(a) may also be satisfied by a showing that the petition raises a novel or unsettled legal question 54 that is important to other patents or patent applications.

(c) Covered Business Method Patent Review: Section 18(a)(1) of the AIA provides that the transitional proceeding for covered business method patents will be regarded as, and will employ the standards and procedures of, a post-grant review under chapter 32 of title 35 United States Code, subject to certain exceptions. Section 18(a)(1)(B) of the AIA specifies that a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or person’s real party-in-interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent. A covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(d) Derivation: 35 U.S.C. § 135(a) provides that an applicant for a patent may file a petition to institute a derivation proceeding. 35 U.S.C. § 135(a) provides that the petition must state with particularity the basis for finding that a named inventor in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, filed the earlier application. The petition must be filed within one year of the first publication by the earlier applicant of a claim to the same or substantially the same invention, must be made under oath, and must be supported by substantial evidence. 35 U.S.C. § 135(a) also provides that 55 the Director may institute a derivation proceeding, if the Director determines that the petition demonstrates that the standards for instituting a derivation proceeding are met.

Evidentiary Standards

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In the decision containing five separate opinions, the court addressed the burden of 68 persuasion that the Board applies when considering the patentability of substitute claims presented in a motion to amend filed under 35 U.S.C. § 316(d) in an IPR. The lead opinion concludes with the following.

The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee.

Aqua Prods., 872 F.3d at 1327.

In accordance with Aqua Products, a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims presented in a motion to amend. Rather, the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence. The Board itself also may justify any finding of unpatentability by reference to evidence of record in the proceeding, for example, when a petitioner ceases to participate. Ultimately, the Board determines whether substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner. See Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, -01130, slip op. at 3˗4 (PTAB Feb. 25, 2019) (Paper 15) (precedential) (providing additional information and guidance regarding motions to amend, such as statutory and regulatory requirements as set forth in 35 U.S.C. § 316(d) and 37 C.F.R. §§ 42.121 and 42.221). Thus, for example, if the entirety of the evidence of record before the Board is in equipoise as to the unpatentability of one or more substitute claims, the Board will grant the motion to amend with respect to such claims, and the Office will issue a certificate incorporating those claims into the patent at issue.

During an oral hearing, a party may rely upon appropriate demonstrative exhibits as well as evidence that has been previously submitted in the 86 proceeding, but may only present arguments relied upon in the papers previously submitted. Except in cases where the Board permits live testimony, no new evidence may be presented at the oral argument. Live testimony may not exceed the scope of the underlying declaration and may not address new theories or arguments not previously presented by a party.

6. Oral Arguments

(e) Filing of Proposed Protective Order. The party filing a Motion to Seal shall include with its supporting papers a copy of a proposed Protective Order and shall certify that the party accepts and agrees to the terms of the Protective Order. Prior to the receipt of 114 confidential information, any other party to the proceeding also shall certify that the party accepts and agrees to the terms of the proposed Protective Order. The proposed Protective Order shall remain in effect until superseded by a Protective Order entered by the Board. If the parties agree to accept the terms of the Default Protective Order, they are not required to provide a copy but must certify that they accept and agree to its terms.