(a) Scope. Part 42 governs proceedings before the Patent Trial and Appeal Board. Sections 1.4, 1.7, 1.14, 1.16, 1.22, 1.23, 1.25, 1.26, 1.32, 1.34, and 1.36 of this chapter also apply to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part.
Annotation: The following rules apply to AIA trials (see Olympus America Inc. v. Perfect Surgical Techniques, Inc., Case No. IPR2014-00233, Paper 56 at 43 (PTAB June 8, 2015)):
- 37 CFR 1.4 — Nature of correspondence and signature requirements
- 37 CFR 1.7 — Times for taking action; Expiration on Saturday, Sunday or Federal holiday
- 37 CFR 1.14 — Patent applications preserved in confidence
- 37 CFR 1.16 — National application filing, search, and examination fees
- 37 CFR 1.22 — Fees payable in advance
- 37 CFR 1.23 — Methods of payment
- 37 CFR 1.25 — Deposit accounts
- 37 CFR 1.26 — Refunds
- 37 CFR 1.32 — Power of attorney
- 37 CFR 1.34 — Acting in a representative capacity
- 37 CFR 1.36 — Revocation of power of attorney; withdrawal of patent attorney or agent
(b) Construction. This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.
Annotation: The Board buttressed its decision permitting Petitioner Target to join a proceeding with its previously filed and partially instituted proceeding involving the same patent with the policy of securing just, speedy and inexpensive resolution, Target Corp. v. Destination Maternity Corp., Case No. IPR2014-00508, Paper 28 at 12 (PTAB Feb. 12, 2015). The first petition was instituted on only one of two challenged claims. The second petition, which was filed after the 35 U.S.C. § 315(b) one-year bar arose, challenged the un-instituted claim. “Thus, even if some claims of the ’563 patent were to be found unpatentable in IPR2013-00531, by removing the discretion to join claim 21, as well as the new challenges presented in the instant proceeding, the case would necessarily have to go back to the district court for a separate determination as to those claims and challenges not at issue in IPR2013-00531. That could result in a waste of judicial resources, increase the litigation costs to both parties, and be contrary to the purpose of ensuring a “just, speedy, and inexpensive resolution.” Id. at 12-13.
(c) Decorum. Every party must act with courtesy and decorum in all proceedings before the Board, including in interactions with other parties.
Annotation: Improper decorum may be exhibited by a paper. Fandango, LLC v. Ameranth, Inc., Case No. CBM2014-00013, Paper 14 at 4 (PTAB Feb. 11, 2014) (“Also, during the conference call, the Board admonished counsel for Patent Owner that every party must act with courtesy and decorum in this proceeding, as is required by 37 C.F.R. § 42.1(c), and that Patent Owner’s preliminary response does not exhibit proper decorum. Counsel for Patent owner acknowledged the inappropriateness of certain statements in the preliminary response, and withdrew the request in the preliminary response that the petition be denied on the alleged ground that Petitioner has acted unethically.”).
(d) Evidentiary standard. The default evidentiary standard is a preponderance of the evidence
Annotation: The burden of proof falls on the party seeking relief, which need not be the petitioner. Corning Optical Comms. RF, LLC v. PPC Broadband, Inc., Case No. IPR2014-00440, Paper 59 at 4 (PTAB Aug. 18, 2015) (“Thus, given the circumstances of this particular case, we consider whether Patent Owner, as the moving party, has met its burden of proof to establish by a preponderance of the evidence that it is entitled to the requested relief, i.e., dismissing the Petitions and vacating our Decisions to Institute. 37 C.F.R. § 42.20(a), (c); § 42.1(d).”).