79120 Federal Register / Vol. 85, No. 237 / Wednesday, December 9, 2020 / Rules and Regulations 

1The transitional covered business method patent 

review program expired on September 16, 2020, in 

accordance with AIA 18(a)(3). Although the 

program has sunset, existing CBM proceedings, 

based on petitions filed before September 16, 2020, 

are still pending. 

dated July 12, 2022 or later shall be 

returned due to untimely filing. 

For timely filed claims in which a 

share of the compensation award is held 

in trust pending documentation to 

establish the eligibility of a potential 

beneficiary, such shares of 

compensation shall be deemed rejected 

consistent with 28 CFR 79.75(b) if 

sufficient documentation to establish 

the eligibility of the potential 

beneficiary is not received within the 12 

month determination period provided 

by the Act, or by July 12, 2023, 

whichever date falls earlier. 

This document is intended to inform 

the public of the Department’s policy 

regarding procedures for filing claims at 

the statutory deadline. The Department 

will post this document to its RECA 

website at www.justice.gov/civil/ 

common/reca, and continue to 

announce this policy at outreach events 

and in communications with claimants, 

counsel, and support groups. 

Dated: December 1, 2020. 

Gerard W. Fischer, 

Assistant Director, Torts Branch, Civil 

Division. 

[FR Doc. 2020–26869 Filed 12–8–20; 8:45 am] 

BILLING CODE 4410–12–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Part 42 

[Docket No. PTO–P–2019–0024] 

RIN 0651–AD40 

PTAB Rules of Practice for Instituting 

on All Challenged Patent Claims and 

All Grounds and Eliminating the 

Presumption at Institution Favoring 

Petitioner as to Testimonial Evidence 

AGENCY: United States Patent and 

Trademark Office, Department of 

Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO or Office) 

revises the rules of practice for 

instituting review on all challenged 

claims or none in inter partes review 

(IPR), post-grant review (PGR), and the 

transitional program for covered 

business method patents (CBM) 

proceedings before the Patent Trial and 

Appeal Board (PTAB or Board) in 

accordance with the U.S. Supreme 

Court decision in SAS Institute Inc. v. 

Iancu (SAS). Consistent with SAS, the 

Office also revises the rules of practice 

for instituting a review, if at all, on all 

grounds of unpatentability for the 

challenged claims that are asserted in a 

petition. Additionally, the Office revises 

the rules to conform to the current 

standard practice of providing surreplies to principal briefs and providing 

that a reply and a patent owner response 

may respond to a decision on 

institution. The Office further revises 

the rules to eliminate the presumption 

that a genuine issue of material fact 

created by the patent owner’s 

testimonial evidence filed with a 

preliminary response will be viewed in 

the light most favorable to the petitioner 

for purposes of deciding whether to 

institute a review. 

DATES: Effective date: The changes in 

this final rule are effective January 8, 

2021. 

Applicability date: This final rule 

applies to all IPR and PGR petitions 

filed on or after January 8, 2021. 

FOR FURTHER INFORMATION CONTACT: 

Michael Tierney, Vice Chief 

Administrative Patent Judge, by 

telephone at 571–272–9797. 

SUPPLEMENTARY INFORMATION: 

Executive Summary 

Purpose: The final rule revises the 

rules of practice for IPR, PGR, and CBM 

proceedings that implemented 

provisions of the Leahy-Smith America 

Invents Act (AIA) providing for trials 

before the Office. 

The U.S. Supreme Court held in SAS 

that a decision to institute an IPR under 

35 U.S.C. 314 may not institute on fewer 

than all claims challenged in a petition. 

See SAS Institute Inc. v. Iancu, 138 S. 

Ct. 1348 (2018). The Court held that the 

Office has the discretion to institute on 

either all of the claims challenged in the 

petition or to deny the petition. 

Previously, the Board exercised 

discretion to institute an IPR, PGR, or 

CBM on all or some of the challenged 

claims and on all or some of the grounds 

of unpatentability asserted in a petition. 

For example, the Board exercised 

discretion to authorize a review to 

proceed on only those claims and 

grounds for which the required 

threshold had been met, thus narrowing 

the issues for efficiency in conducting a 

proceeding. 

In light of SAS, the Office provided 

guidance that, if the Board institutes a 

trial under 35 U.S.C. 314 or 324, the 

Board will institute on all claims and all 

grounds included in a petition of an 

IPR, PGR, or CBM. To implement this 

practice in the regulation, this final rule 

revises the rules of practice for 

instituting an IPR, PGR, or CBM to 

require institution on either all 

challenged claims (and all of the 

grounds) presented in a petition or 

none. Under the amended rule, 

therefore, in all pending IPR, PGR, and 

CBM proceedings before the Office, the 

Board will either institute review on all 

of the challenged claims and grounds of 

unpatentability presented in the petition 

or deny the petition. 

The second change is conforming the 

rules to certain standard practices before 

the PTAB in IPR, PGR, and CBM 

proceedings. Specifically, this final rule 

amends the rules to set forth the briefing 

requirements of sur-replies to principal 

briefs and to provide that a reply and a 

patent owner response may respond to 

a decision on institution. 

Finally, this final rule amends the 

rules to eliminate, when deciding 

whether to institute an IPR, PGR, or 

CBM review, the presumption in favor 

of the petitioner for a genuine issue of 

material fact created by testimonial 

evidence submitted with a patent 

owner’s preliminary response. As with 

all other evidentiary questions at the 

institution phase, the Board will 

consider all evidence to determine 

whether the petitioner has met the 

applicable standard for institution of the 

proceeding. 

Costs and Benefits: This rulemaking is 

not economically significant under 

Executive Order 12866 (Sept. 30, 1993). 

Background 

On September 16, 2011, the AIA was 

enacted into law (Pub. L. 112–29, 125 

Stat. 284 (2011)), and within one year, 

the Office implemented rules to govern 

Office practice for AIA trials, including 

IPR, PGR, CBM,1 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, PostGrant Review Proceedings, and 

Transitional Program for Covered 

Business Method Patents, 77 FR 48680 

(Aug. 14, 2012); and 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 

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 


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Federal Register / Vol. 85, No. 237 / Wednesday, December 9, 2020 / Rules and Regulations 79121 

Office Patent Trial Practice Guide, 77 FR 

48756 (Aug. 14, 2012) (TPG2012). This 

guide has been periodically updated. 

See Office Patent Trial Practice Guide, 

August 2018 Update, 83 FR 39989 (Aug. 

13, 2018) (TPG2018); and Office Patent 

Trial Practice Guide, July 2019 Update, 

84 FR 33925 (July 16, 2019) (TPG2019). 

A consolidated Trial Practice Guide, 

incorporating updates to the original 

August 2012 Practice Guide, was 

published in November 2019. See 

Consolidated Trial Practice Guide, 84 

FR 64280 (Nov. 21, 2019) (CTPG). 

Previously, under 37 CFR 42.108(a) 

and 42.208(a), the Board exercised the 

discretion to institute an IPR, PGR, or 

CBM on all or some of the challenged 

claims and on all or some of the grounds 

of unpatentability asserted for each 

claim presented in a petition. For 

example, the Board exercised the 

discretion to authorize a review to 

proceed on only those claims and 

grounds for which the required 

threshold under 35 U.S.C. 314(a) or 

324(a) had been met, narrowing the 

issues for efficiency. 

The U.S. Supreme Court held in SAS, 

however, that a decision to institute an 

IPR trial under 35 U.S.C. 314 may not 

institute review on fewer than all claims 

challenged in a petition. The Court held 

that the Office has the discretion to 

institute trial on either all of the claims 

challenged in the petition or to deny the 

petition. On April 26, 2018, the Office 

posted guidance on the impact of SAS 

on AIA trial proceedings at https:// 

www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/ 

trials/guidance-impact-sas-aia-trial. In 

light of SAS, the guidance states that if 

the Board institutes a trial for an IPR, 

PGR, or CBM under 35 U.S.C. 314 or 

324, the Board will institute on all 

claims and all grounds included in a 

petition. The guidance provides that 

‘‘the PTAB will institute as to all claims 

or none,’’ and ‘‘[a]t this time, if the 

PTAB institutes a trial, the PTAB will 

institute on all challenges raised in the 

petition.’’ Id. 

Subsequently, the U.S. Court of 

Appeals for the Federal Circuit (the 

Federal Circuit) has held that ‘‘[e]qual 

treatment of claims and grounds for 

institution purposes has pervasive 

support in SAS.’’ PGS Geophysical AS 

v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 

2018) (noting that the Supreme Court in 

SAS wrote that ‘‘the petitioner is master 

of its complaint and normally entitled to 

judgment on all of the claims it raises,’’ 

SAS, 138 S. Ct. at 1355, and that section 

314 ‘‘indicates a binary choice—either 

institute review or don’t,’’ id., adding 

that ‘‘Congress didn’t choose to pursue’’ 

a statute that ‘‘allows the Director to 

institute proceedings on a claim-byclaim and ground-by-ground basis’’ as 

in ex parte reexamination, id. at 1356). 

The Federal Circuit has also held that 

‘‘if the Board institutes an IPR, it must 

similarly address all grounds of 

unpatentability raised by the 

petitioner.’’ AC Techs. S.A. v. 

Amazon.com, Inc., 912 F.3d 1358, 1364 

(Fed. Cir. 2019). 

Consistent with SAS, the Office’s 

guidance, and Federal Circuit’s case 

law, this final rule revises §§ 42.108(a) 

and 42.208(a) to provide for instituting 

an IPR, PGR, or CBM trial on all 

challenged claims or none. This final 

rule also revises these rules for 

instituting a review, if at all, on all of 

the grounds of unpatentability for the 

challenged claims that are presented in 

a petition. In all pending IPR, PGR, and 

CBM proceedings before the Office, the 

Board will either institute on all of the 

challenged claims and on all grounds of 

unpatentability asserted for each claim 

or deny the petition. 

In addition, consistent with the 

TPG2018, this final rule amends 

§§ 42.23, 42.24, 42.120, and 42.220 to 

permit (1) replies and patent owner 

responses to address issues discussed in 

the institution decisions, and (2) surreplies to principal briefs (i.e., to a reply 

to a patent owner response or to a reply 

to an opposition to a motion to amend). 

TPG2018 at 14–15. 

As noted in the TPG2018, in response 

to issues arising from SAS, the 

petitioner is permitted to address in its 

reply brief issues discussed in the 

institution decision. Similarly, the 

patent owner is permitted to address the 

institution decision in its response and 

a sur-reply, if necessary to respond to 

the petitioner’s reply. However, the surreply may not be accompanied by new 

evidence other than deposition 

transcripts of the cross-examination of 

any reply witness. Sur-replies may only 

respond to arguments made in reply 

briefs, comment on reply declaration 

testimony, or point to cross-examination 

testimony. A sur-reply may also address 

the institution decision if necessary to 

respond to the petitioner’s reply. This 

sur-reply practice essentially replaces 

the previous practice of filing 

observations on cross-examination 

testimony. 

In 2012, the Office also promulgated 

§§ 42.107(c) and 42.207(c), which 

initially included a prohibition against 

a patent owner filing new testimony 

evidence with its preliminary response. 

In particular, these rules stated: ‘‘No 

new testimonial evidence. The 

preliminary response shall not present 

new testimony evidence beyond that 

already of record, except as authorized 

by the Board.’’ 37 CFR 42.107(c) and 

42.207(c) (2012). 

In April 2016, after receiving 

comments from the public and carefully 

reviewing them, the Office promulgated 

a rule to allow new testimonial evidence 

to be submitted with a patent owner’s 

preliminary response. Amendments to 

Rules of Practice for Trials Before the 

Patent Trial and Appeal Board, 81 FR 

18750 (April 1, 2016). The Office also 

amended the rules to provide a 

presumption in favor of the petitioner 

for a genuine issue of material fact 

created by such testimonial evidence 

solely for purposes of deciding whether 

to institute an IPR, PGR, or CBM review. 

Id. at 18755–57. 

Stakeholder feedback received in 

party and amicus briefing as part of the 

Precedential Opinion Panel (POP) 

review process in Hulu, LLC v. Sound 

View Innovations, LLC, Case IPR2018– 

01039, Paper 15 (PTAB Apr. 3, 2019) 

(granting POP review), indicated that 

the rule has caused some confusion at 

the institution stage for AIA 

proceedings. For example, certain 

stakeholders indicated that the 

presumption in favor of the petitioner 

for genuine issues of material fact 

created by patent owner testimonial 

evidence also creates a presumption in 

favor of the petitioner for questions 

relating to whether a document is a 

printed publication. Hulu, Paper 29 at 

16. The Office has clarified in Hulu that 

this is not the case—the only 

presumption in favor of the petitioner is 

set forth in 37 CFR 42.108(c) applying 

to genuine issues of material fact created 

by testimonial evidence. Id. As to that 

presumption, the Office’s experience is 

consistent with the concerns raised by 

commenters here that the presumption 

may discourage patent owners from 

filing testimonial evidence with their 

preliminary responses to avoid creating 

a presumption against the patent owner 

where none would otherwise exist. 

Section 314(a) of 35 U.S.C. provides 

that ‘‘[t]he Director may not authorize 

an inter partes review to be instituted 

unless the Director determines that the 

information presented in the petition 

. . . and any response . . . shows that 

there is a reasonable likelihood that the 

petitioner would prevail with respect to 

at least 1 of the claims challenged in the 

petition.’’ 35 U.S.C. 314(a). That is, the 

statute provides that a petitioner is 

required to present evidence and 

arguments sufficient to show that it is 

reasonably likely that it will prevail in 

showing unpatentability. Hulu, Paper 

29, at 12–13 (citing 35 U.S.C. 312(a)(3), 

314(a)). For a PGR proceeding, the 

standard for institution is whether it is 

‘‘more likely than not’’ that the 


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79122 Federal Register / Vol. 85, No. 237 / Wednesday, December 9, 2020 / Rules and Regulations 

petitioner would prevail at trial. See 35 

U.S.C. 324(a). In determining whether 

the information presented in the 

petition meets the standard for 

institution, the PTAB considers the 

totality of the evidence currently in the 

record. See Hulu, Paper 29, at 3, 19. 

Thus, a petitioner carries the burden in 

both IPRs and PGRs at the institution 

stage. The Office’s experience with the 

2016 rule change, however, is that 

having a presumption in favor of the 

petitioner at the institution stage for one 

class of evidence may lead to results 

that are inconsistent with this statutory 

scheme. 

Accordingly, the Office has an interest 

in ensuring that testimonial evidence is 

treated similarly to other evidence for 

purposes of institution and consistently 

with the statutory scheme. This final 

rule amends the rules of practice to 

eliminate the presumption in favor of 

the petitioner for a genuine issue of 

material fact created by testimonial 

evidence submitted with a patent 

owner’s preliminary response when 

deciding whether to institute an IPR, 

PGR, or CBM review. Thus, consistent 

with the statutory framework, any 

testimonial evidence submitted with a 

patent owner’s preliminary response 

will be taken into account as part of the 

totality of the evidence. Doing so will 

remove a disincentive to patent owners 

submitting pre-institution testimony, 

eliminate a source of confusion, and 

align the Board’s practice with its 

treatment of other evidence at the time 

of institution, without adversely 

impacting petitioners’ ability to ensure 

that otherwise meritorious petitions 

proceed to trial. Further, while parties 

normally do not have an opportunity to 

depose the testifying parties prior to 

institution, the Board’s experience is 

that cross-examination is not necessary 

to weigh the strengths and weaknesses 

of the testimony for purposes of 

institution. 

Discussion of Specific Rules 

37 CFR, part 42, is amended as 

follows: 

Section 42.23 

Section 42.23 is amended to permit 

patent owners and petitioners to file 

sur-replies to principal briefs (i.e., to a 

reply to a patent owner response or to 

a reply to an opposition to a motion to 

amend). In particular, the title and 

§ 42.23(a) are amended to add ‘‘surreplies’’ so that the rule is amended as 

follows: ‘‘42.23 Oppositions, replies, 

and sur-replies. (a) Oppositions, replies, 

and sur-replies . . . and, if the paper to 

which the opposition, reply, or surreply . . . ’’ 

Paragraph (b) of § 42.23 is amended to 

permit petitioners to address issues 

discussed in the institution decision in 

the reply briefs. Specifically, § 42.23(b) 

is amended to replace the second 

sentence with: ‘‘A reply may only 

respond to arguments raised in the 

corresponding opposition, patent owner 

preliminary response, patent owner 

response, or decision on institution.’’ 

Paragraph (b) of § 42.23 is amended to 

address the content of a sur-reply by 

adding the following: ‘‘A sur-reply may 

only respond to arguments raised in the 

corresponding reply, and may not be 

accompanied by new evidence other 

than deposition transcripts of the crossexamination of any reply witness.’’ 

Section 42.24 

The title and § 42.24(c) are amended 

to provide for word count limit for surreplies so that they are amended as 

follows: ‘‘§ 42.24 Type-volume or page 

limits for petitions, motions, 

oppositions, replies, and sur-replies’’ 

and ‘‘(c) Replies and Sur-replies. The 

following word counts or page limits for 

replies and sur-replies apply . . . ’’ 

Paragraph (c) of § 42.24 is amended to 

add a new paragraph (4) that would 

limit sur-replies to replies to patent 

owner responses to petitions to 5,600 

words. 

Section 42.71 

The third sentence of § 42.71(d) is 

amended to add ‘‘a sur-reply’’ so that a 

rehearing request may identify matters 

in a sur-reply consistent with §§ 42.23 

and 42.24 that allow the parties to file 

sur-replies to principal briefs. 

Sections 42.108 and 42.208 

Each of §§ 42.108(a) and 42.208(a) is 

amended to state that when instituting 

IPR or PGR, the Board will authorize the 

review to proceed on all of the 

challenged claims and on all grounds of 

unpatentability asserted for each claim. 

Each of §§ 42.108(b) and 42.208(b) is 

amended to state that at any time prior 

to institution of IPR or PGR, the Board 

may deny all grounds for 

unpatentability for all of the challenged 

claims. Denial of all grounds is a Board 

decision not to institute IPR or PGR. 

The second sentence in each of 

§§ 42.108(c) and 42.208(c) is amended 

to delete the phrase ‘‘but a genuine issue 

of material fact created by such 

testimonial evidence will be viewed in 

the light most favorable to the petitioner 

solely for purposes of deciding whether 

to institute [a] review.’’ Therefore, the 

second sentence in each of §§ 42.108(c) 

and 42.208(c) states the following: ‘‘The 

Board’s decision will take into account 

a patent owner preliminary response 

where such a response is filed, 

including any testimonial evidence.’’ 

Sections 42.120 and 42.220 

The first sentence of each of 

§§ 42.108(a) and 42.208(a) is replaced 

with the following: ‘‘(a) Scope. A patent 

owner may file a single response to the 

petition and/or decision on institution.’’ 

Response to Comments 

In the notice of proposed rulemaking, 

the Office sought comments on these 

proposed changes. PTAB Rules of 

Practice for Instituting on All 

Challenged Patent Claims and All 

Grounds and Eliminating the 

Presumption at Institution Favoring 

Petitioner as to Testimonial Evidence, 

85 FR 31728 (May 27, 2020). The Office 

received a total of 40 comments, 

including 5 comments from individuals, 

30 comments from associations, 1 

comment from a law firm, and 4 

comments from corporations. The Office 

appreciates the thoughtful comments 

representing a diverse set of views from 

the various public stakeholder 

communities. All of the comments are 

posted on the PTAB website at https:// 

www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/ 

comments-proposed-rules-aia-trial. 

Upon careful consideration of the 

public comments, and taking into 

account the effect of the rule changes on 

the economy, the integrity of the patent 

system, the efficient administration of 

the Office, and the ability of the Office 

to timely complete instituted 

proceedings, the Office adopts the 

proposed rule changes (with minor 

deviations in the rule language, as 

discussed below). Any deviations from 

the proposed rule are based upon a 

logical outgrowth of the comments 

received. 

The Office’s responses address the 

comments that are directed to the 

proposed changes set forth in the notice 

of proposed rulemaking. 85 FR 31728. 

Any comments directed to topics that 

are beyond the scope of the notice of 

proposed rulemaking will not be 

addressed at this time. 

Instituting on All Claims and All 

Grounds 

Comment 1: Most comments strongly 

supported the proposed rules that 

codify the Board’s existing practice for 

instituting on all challenged claims and 

all grounds presented in a petition when 

the Board institutes a review. Several 

comments indicated that instituting on 

all challenged claims and grounds is the 

most efficient course of action to fully 

address the parties’ dispute before the 

Board and to allow district courts to 


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Federal Register / Vol. 85, No. 237 / Wednesday, December 9, 2020 / Rules and Regulations 79123 

apply AIA estoppel in the most efficient 

manner during any subsequent, parallel 

litigation, including making the 

estoppel provisions of section 315(e)(2) 

more predictable and robust. A number 

of comments also stated that this type of 

review structure is consistent with the 

Supreme Court’s decision in SAS and 

promotes efficiency by resolving all 

challenges presented in a single 

proceeding, which will increase 

certainty for patent owners. A few 

comments further noted that instituting 

on all claims and grounds may strike a 

balance that helps achieve the 

Congressional objective of providing a 

fair, comprehensive, and efficient 

alternative to district court litigation, 

and adopting the proposed rules may 

help promote clarity. 

Response: The Office appreciates the 

thoughtful comments and agrees with 

them. In this final rule, the Office 

adopts the proposed rules that codify 

the Board’s existing practice that has 

been in place for over two years. Under 

the amended rules, when instituting a 

review, the Board will authorize the 

review to proceed on all of the 

challenged claims and on all grounds of 

unpatentability asserted for each claim. 

Comment 2: A comment stated that 

the Supreme Court in SAS did not 

squarely address partial-grounds 

institution and that if the rules were 

implemented rigidly, they would harm 

patent owners, petitioners, and the 

public affected by the challenged patent. 

In particular, the comment suggested 

that denying petitions that have some 

meritorious grounds or instituting 

reviews that have some non-meritorious 

grounds would constitute waste, making 

this rulemaking economically 

significant under Executive Orders 

12866 and 13771. 

Response: The Federal Circuit has 

held that ‘‘[e]qual treatment of claims 

and grounds for institution purposes has 

pervasive support in SAS.’’ PGS 

Geophysical AS, 891 F.3d at 1360. The 

Federal Circuit noted that the Supreme 

Court in SAS wrote that ‘‘the petitioner 

is master of its complaint and normally 

entitled to judgment on all of the claims 

it raises’’ and that section 314 ‘‘indicates 

a binary choice—either institute review 

or don’t,’’ adding that ‘‘‘Congress didn’t 

choose to pursue’ a statute that ‘allows 

the Director to institute proceedings on 

a claim-by-claim and ground-by-ground 

basis’ as in ex parte reexamination.’’ Id. 

(quoting SAS, 138 S. Ct at 1355–1356). 

The Federal Circuit has also held that 

‘‘if the Board institutes an IPR, it must 

similarly address all grounds of 

unpatentability raised by the 

petitioner.’’ AC Techs. S.A., 912 F.3d at 

1364. 

As discussed above, this final rule 

codifies the Board’s existing practice 

that has been in place for over two years 

for instituting on all challenged claims 

and grounds when the Board institutes 

a review. The Office of Management and 

Budget (OMB) has determined this rule 

to be not economically significant under 

Executive Order 12866. Further, there is 

no significant economic impact as the 

rule merely implements the law, as 

mandated by SAS and further supported 

by subsequent Federal Circuit precedent 

like PGS Geophysical AS, 891 F.3d at 

1360. As some of the comments have 

recognized, on balance, the amended 

rules promote clarity and efficiency by 

addressing in one proceeding all 

challenges asserted in a petition. 

In short, instituting on all challenged 

claims and grounds is consistent with 

the Supreme Court’s decision in SAS, is 

mandated by the Federal Circuit, and is 

consistent with the Board’s existing 

practice. In adopting the proposed rules, 

the Office has considered the effect of 

the rules on the economy, the integrity 

of the patent system, the efficient 

administration of the Office, and the 

ability of the Office to timely complete 

proceedings instituted. 

Comment 3: Some comments 

encouraged the Office to clarify that the 

preexistence of a claim where no 

reasonable likelihood of success has 

been demonstrated does not create a 

presumption against institution where 

there is another claim that does have a 

reasonable likelihood of succeeding. A 

few comments urged the Office not to 

apply the rules for instituting on all 

claims and grounds to deny meritorious 

petitions as to some claims or grounds. 

Response: The Office appreciates the 

thoughtful comments. Even when a 

petitioner demonstrates a reasonable 

likelihood of prevailing with respect to 

one or more claims, institution of 

review remains discretionary. SAS, 138 

S. Ct. at 1356 (‘‘[Section] 314(a) invests 

the Director with discretion on the 

question whether to institute review 

. . . ’’ (emphasis omitted)); Harmonic 

Inc. v. Avid Tech., Inc., 815 F.3d 1356, 

1367 (Fed. Cir. 2016) (‘‘[T]he PTO is 

permitted, but never compelled, to 

institute an IPR proceeding.’’). In 

exercising that discretion, the Board is 

guided by the statutory requirement, in 

promulgating regulations for IPR, PGR, 

and CBM, to consider the effect of any 

regulations on ‘‘the efficient 

administration of the Office [and] the 

ability of the Office to timely complete 

proceedings,’’ 35 U.S.C. 316(b) and 

326(b), as well as the requirement to 

construe our rules to ‘‘secure the just, 

speedy, and inexpensive resolution of 

every proceeding,’’ 37 CFR 42.1(b). The 

Office’s guidance, issued on June 5, 

2018, also explains that the Board may 

consider the number of claims and 

grounds that meet the reasonable 

likelihood standard when deciding 

whether to institute a review. SAS 

Q&As, Part D, Effect of SAS on Future 

Challenges that Could Be Denied for 

Statutory Reasons (June 5, 2018), 

available at https://www.uspto.gov/sites/ 

default/files/documents/sas_qas_

20180605.pdf (‘‘[T]he panel will 

evaluate the challenges and determine 

whether, in the interests of efficient 

administration of the Office and 

integrity of the patent system (see 35 

U.S.C. 316(b)), the entire petition should 

be denied under 35 U.S.C. 314(a).’’). 

Comment 4: One comment suggested 

several changes in the language of 

§ 42.108. For example, the comment 

suggested (1) changing the title of 

§ 42.108 from ‘‘Institution of inter partes 

review’’ to ‘‘Decision whether to 

institute review’’; (2) changing ‘‘When’’ 

to ‘‘If’’ in the phrase ‘‘When instituting 

inter partes review’’ in § 42.108(a); (3) 

deleting the phrase ‘‘the Board will 

authorize’’ in § 42.108(a); and (4) 

replacing ‘‘all of the challenged claims’’ 

with ‘‘all involved claims.’’ 

Response: The Office appreciates the 

comment. The suggested changes are 

not necessary to codify the existing 

practice for instituting on all challenged 

claims and grounds when the Board 

institutes a review. Notably, the title of 

§ 42.108 is consistent with the title of 35 

U.S.C. 314, which is ‘‘Institution of inter 

partes review.’’ Moreover, the term 

‘‘challenged claims’’ is consistent with 

35 U.S.C. 318 and 328, each of which 

states ‘‘a final written decision with 

respect to the patentability of any patent 

claim challenged by the petitioner and 

any new claim added.’’ 

Addressing the Institution Decision 

Comment 5: Most comments strongly 

supported the proposed rules codifying 

the Board’s existing practice that allows 

the parties to address issues raised in 

the institution decision. Several 

comments recognized that the 

institution decision is a vehicle by 

which the Board can solicit responsive 

evidence and arguments on certain 

issues and that allowing the parties to 

address those issues may lead to 

developing a more complete written 

record, clarifying the issues, and 

ensuring fairness. A few comments 

sought clarification about whether a 

patent owner may file a response to 

either or both the petition and decision 

on institution, and whether a petitioner 

may file a reply when the patent owner 

elects not to file a response. 


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Response: The Office appreciates the 

thoughtful comments. In this final rule, 

the Office adopts the proposed rules 

codifying the Board’s existing practice 

that allows the parties to address issues 

raised in the institution decision. Under 

the amended rules, a patent owner may 

file a single response to address issues 

raised in either or both the petition and 

institution decision, and a petitioner 

may file a single reply to address issues 

raised in either or both the patent owner 

response and institution decision. For 

those rare circumstances in which the 

patent owner elects not to file a 

response, the patent owner must arrange 

a conference call with the parties and 

the Board, as required by the scheduling 

order, and the petitioner is expected to 

notify the Board during the conference 

call whether it intends to file a reply to 

the decision on institution. The absence 

of a patent owner response will not 

prevent a petitioner from filing a reply 

where appropriate to address the 

institution decision. 

Comment 6: One comment does not 

support the rule changes that allow the 

parties to address the issues raised in 

the institution decision because the 

Board should not take sides in the 

dispute. Another comment suggested 

that the rules should not provide a basis 

for parties to re-litigate the institution 

decision. 

Response: As noted above, a few 

comments have recognized that the 

institution decision is a vehicle by 

which the Board can solicit responsive 

evidence and arguments on certain 

issues. Notably, a decision instituting a 

review does not make a final 

determination with respect to the 

patentability of the challenged claims or 

with respect to the claim construction. 

Allowing the parties to address the 

issues raised in the institution decision 

may promote developing a more 

complete written record, clarify the 

issues, and ensure fairness in issuing 

the final written decision on 

patentability. 

Sur-Replies 

Comment 7: Most comments strongly 

supported the proposed rules that 

codify the Board’s existing practice of 

allowing sur-replies to principal briefs. 

Several comments indicated that 

allowing sur-replies provides certainty 

to Board processes. Some comments 

also noted that allowing sur-replies 

gives a patent owner an opportunity to 

respond to new exhibits or other new 

information in a petitioner’s reply, 

providing balance during AIA 

proceedings and affording patent 

owners a fair opportunity to be heard. 

Some comments stated that sur-replies 

are preferable to the previous procedure 

of authorizing a patent owner to file 

observations on cross-examination 

testimony in response to testimonial 

evidence submitted with a reply 

because they provide a more complete 

record. 

Response: The Office appreciates 

these thoughtful comments. The 

amended rules are intended to conform 

to existing practice. Consistent with the 

practice as outlined in the TPG2018, 

and the CTPG published in November 

2019, the new rules will permit surreplies to principal briefs (i.e., to a reply 

to a patent owner response or to a reply 

to an opposition to a motion to amend). 

However, a sur-reply may not be 

accompanied by new evidence other 

than transcripts of the crossexamination testimony of any reply 

witness. Sur-replies are permitted only 

to respond to arguments made in reply 

briefs, comment on reply declaration 

testimony, or point to cross-examination 

testimony. A sur-reply also may address 

the institution decision if necessary to 

respond to the petitioner’s reply. This 

sur-reply practice essentially replaces 

the previous practice of filing 

observations on cross-examination 

testimony. 

Comment 8: Some comments 

expressed concern that the amended 

rules do not expressly provide for a surreply as a matter of right, stating that 

this may lead to uncertainty among 

parties involved in an AIA trial 

proceeding. 

Response: See response to comment 7. 

Consistent with existing practice as 

provided in the TPG2018 and the CTPG, 

no prior authorization is required to file 

a sur-reply to a reply to a patent owner 

response or to a reply to an opposition 

to a motion to amend. 

Comment 9: Some comments 

expressed concern that the Proposed 

Rules do not place limits on the 

introduction of new evidence in a surreply, which could lead to uncertainty 

and gamesmanship. 

Response: The Office appreciates 

these thoughtful comments. The Office 

has revised the text of rule 42.23(b) to 

clarify that the sur-reply ‘‘may not be 

accompanied by new evidence other 

than transcripts of the crossexamination testimony of any reply 

witness.’’ This conforms to existing 

practice as stated in the TPG2018 and 

the CTPG. 

Word Limits for Sur-Replies 

Comment 10: Most comments strongly 

supported the proposed rule change to 

37 CFR 42.24(c), which imposes a limit 

of 5,600 words for sur-replies to patent 

owner responses to petitions. Some 

comments noted that this rule provides 

certainty as well as fairness. 

Response: The Office appreciates 

these comments. The amended rule is 

intended to conform to existing practice. 

Consistent with the practice as outlined 

in the TPG2018 and the CTPG, surreplies are subject to the same word or 

page limit as a reply. 

Comment 11: The Office has also 

received comments on the existing 

practice of requiring, in response to a 

paper that contains a statement of 

material fact, a listing of facts that are 

admitted, denied, or cannot be admitted 

or denied. 

Response: The Office appreciates the 

comments received; however, they are 

beyond the scope of the current 

rulemaking. No changes to that practice 

are implemented in the amended rules. 

The Office will take these comments 

into account as the Office continually 

seeks to improve the AIA review 

process to maintain fair procedures. 

Comment 12: The Office has also 

received some comments suggesting 

changes to the word count limit. For 

example, one comment requested that 

the word count be a function of the 

number of claims in a challenged patent 

or the length of those claims. Another 

comment expressed concern about 

perceived unfairness in word counts, 

wherein patent owners may file both a 

preliminary response and an opposition, 

each containing 14,000 words, in 

addition to a sur-reply of 5,600 words, 

whereas a petitioner is limited to a 

petition of 14,000 words followed by a 

reply of 5,600 words. This comment 

suggested that some of this disparity 

could be mitigated if petitioners are 

allowed to file a reply whenever a 

patent owner files a preliminary 

response. 

Response: The Office appreciates the 

comments received; however, they are 

beyond the scope of the current 

rulemaking. The Office will take these 

comments into account as the Office 

continually seeks to improve the AIA 

review process to maintain fair 

procedures. 

Eliminating the Presumption at 

Institution 

Comment 13: Most comments favored 

adoption of the proposed rule 

eliminating the presumption at 

institution that a genuine issue of 

material fact created by testimonial 

evidence will be viewed in a light most 

favorable to petitioner for purposes of 

deciding whether to institute. However, 

a number of comments opposed 

adopting the proposed rule. 

Response: The Office appreciates the 

input from the public on this issue, 


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whether supporting or opposing the 

proposed rule. The suggestion that the 

present rule be retained is not adopted. 

The presumption in favor of the 

petitioner where there is a genuine 

dispute of material fact created by 

testimonial evidence in a patent owner 

preliminary response has created 

confusion as to how other evidence 

should be weighed. This confusion was 

resolved in large part in Hulu, but Hulu 

highlights an inconsistency in the 

treatment of evidence that the proposed 

rule is intended to resolve. In particular, 

in Hulu, the Board held that disputed 

questions of material fact raised by 

evidence other than testimonial 

evidence are resolved by the Board at 

the institution phase without a 

presumption, even where additional 

evidence or discovery might have 

illuminated them. See Hulu, Paper 29, at 

16–20 (addressing the standard for 

proving printed publication preinstitution). The proposed rule confirms 

that no presumption applies in favor of 

institution regardless of the existence or 

nature of a factual dispute in the preinstitution record and regardless of the 

type of evidence, testimonial or 

otherwise. 

Many of the comments opposing the 

proposed rule are arguments in favor of 

an institution presumption generally. 

This would conflict with the statute, 

which makes clear that the burden is on 

the petitioner to meet the applicable 

standard that it would prevail with 

respect to at least one of the claims 

challenged in the petition. See 35 U.S.C. 

314(a), 324(a). Moreover, the 

presumption provided by the existing 

rule has proved unnecessary to resolve 

the institution question in other 

contexts. Disputed questions of material 

fact raised by other than testimonial 

evidence are resolved by the Board at 

the institution phase without a 

presumption. See Hulu, Paper 29, at 16– 

20 (addressing the standard for proving 

printed publication pre-institution). 

Comment 14: A number of comments 

supporting the rule change asserted that 

the current presumption in favor of the 

petitioner is biased towards institution 

and discourages patent owners from 

submitting conflicting testimonial 

evidence with a preliminary response. 

One comment suggested that, in view of 

the presumption of validity, testimonial 

evidence should instead be viewed in 

the light most favorable to patentability 

and that a presumption in favor of the 

patent owner would be appropriate. 

Another comment suggested that a 

neutral presumption is best in the 

interest of fairness and reduces the risk 

that innovators will be deprived of their 

innovations. 

Response: The Office appreciates the 

comments and agrees that any 

presumption in favor of institution is 

inappropriate. The Office also agrees 

that under the current rule, a patent 

owner might not be inclined to submit 

pre-institution testimony that might, 

under the presumption, create an issue 

of material fact. As in the proposed rule, 

the final rule modifies the existing rule 

to address these concerns and no longer 

specifies that a genuine issue of material 

fact created by testimonial evidence 

results in a presumption in favor of a 

petitioner. The rule change removes any 

bias or appearance of bias in favor of 

petitioner, and provides a balanced 

approach to ensure that all testimonial 

evidence submitted by the parties is 

fairly considered. 

Comment 15: Several comments in 

support of the rule change noted that 

the practice to view testimonial 

evidence in the light most favorable to 

the petitioner for purposes of instituting 

a review conflicts with the decision of 

Congress to place the burden of proof on 

the petitioner. One comment noted that, 

by eliminating the presumption, the 

proposed rule change enables the PTAB 

to consider the totality of the evidence 

in deciding whether the petition meets 

the standard for institution. Another 

comment opposing the rule change 

stated the change thwarts Congress’s 

purposes in establishing the AIA by 

hampering the ability to challenge lowquality patents. 

Response: The Office appreciates 

these thoughtful comments. As set forth 

in the statutes established by Congress, 

the burden is on the petitioner to meet 

the applicable standard that it would 

prevail with respect to at least one of the 

claims challenged in the petition. See 35 

U.S.C. 314(a), 324(a). In response to 

recent feedback received from the 

public, the Office agrees it is 

inconsistent with the statutory 

framework to view testimonial evidence 

in the light most favorable to 

petitioners. The presumption has 

caused confusion at the institution stage 

for AIA proceedings and has proved 

unnecessary to resolve the institution 

question in other contexts. With the 

elimination of the presumption, the 

PTAB will consider the totality of the 

evidence to determine whether the 

petitioner has met the standard for 

institution of the procedure. 

The Office disagrees that elimination 

of the presumption frustrates the 

intention of Congress. To the contrary, 

Congress provided that institution of 

IPR is discretionary and conditioned on 

the petitioner meeting the applicable 

standard for review. Id. Elimination of 

the presumption furthers Congressional 

intent. In addition, elimination of the 

presumption does not impact the ability 

of petitioners to file with the Office a 

petition to institute a review of a patent. 

Comment 16: A number of comments 

opposing the proposed rule questioned 

the fairness of the proposed rule to 

petitioners. One comment expressed 

concern that under the proposed rule, 

the patent owner would have a ‘‘onesided ability to enter unchallenged 

evidence prior to institution.’’ Other 

comments expressed concern that 

crediting a patent owner’s testimonial 

evidence without providing crossexamination or an opportunity to 

respond may lead to denials of 

institution that cannot be appealed, 

even where the patent owner’s factual 

contentions are mistaken. Several 

comments expressed the view that the 

lack of cross-examination is especially 

concerning when the patent owner 

introduces testimony asserting 

‘‘secondary considerations’’ such as 

unexpected results, commercial success, 

copying by others, and long-felt but 

unmet need. One comment expressed 

concern that the proposed rule would 

lead to more discretionary denials of 

institution. One comment expressed 

concern that the proposed rule would 

reduce patent quality, drive up costs, 

and invite ‘‘gamesmanship.’’ 

Response: The Office appreciates 

these comments but does not adopt 

them. The Office believes the Board is 

adequately able to weigh the parties’ 

testimonial evidence and fairly resolve 

factual disputes at the institution stage 

without a presumption crediting the 

petitioner’s testimony. For example, 

testimony must still disclose the 

underlying facts and data upon which it 

relies, or it will be entitled to little 

weight. See 37 CFR 42.65(a); CTPG, at 

35. Moreover, consistent with existing 

practice, limited pre-institution 

discovery may be granted at the 

discretion of the Board. Nonetheless, 

although cross-examination of preinstitution testimony might be helpful 

in a few cases, as a general matter, the 

Office believes that its benefits will be 

outweighed by the greater expense to 

the Office and the parties, where the 

Board is able to reach a decision on 

institution based on the briefs and 

documents as submitted by the parties. 

Comment 17: Several comments 

expressed concern that adopting the 

proposed rule would unduly complicate 

the pre-institution phase for AIA trials. 

This is sometimes described in the 

comments as creating a ‘‘trial within a 

trial.’’ One comment expressed concern 

that the proposed rule could give rise to 

‘‘almost universal requests’’ for preinstitution discovery and additional 


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briefing, leading to greater costs and 

burdens to the parties. Another 

comment expressed concern that there 

are no procedural guidelines in place to 

prevent this. This comment expressed 

concern that ‘‘over complication’’ of the 

pre-institution stage advantages more 

experienced parties, and that the costs 

and burdens to the Office may increase 

due to pre-institution depositions and 

additional briefing. Several other 

comments suggested that the rule 

should give petitioners the opportunity 

to reply if a patent owner submits 

testimony with the preliminary 

response that raises a genuine issue of 

material fact. One comment expressed 

the view that the chances of error by the 

Board are greater if institution is 

decided without the safeguards of 

discovery, cross-examination, additional 

briefing, and a hearing. Another 

comment opposed the proposed rule 

because it endorses resolution of 

disputes of fact at the institution phase 

on an incomplete record and without 

judicial review. 

Response: The Office appreciates 

these thoughtful comments and 

concerns on this issue. At present, 

although timely and well-supported 

requests are permitted, as consistent 

with existing practice, no additional 

briefing or discovery (e.g., depositions 

of declarants) during the institution 

phase is contemplated as a result of the 

submission of testimony with the 

preliminary response. In this way, no 

trial within a trial is anticipated, and the 

parties will not be burdened with 

greater costs. The Board has the benefit 

of the documentary evidence of record, 

as well as elucidating argument from the 

parties, in evaluating the testimonial 

evidence. In most cases, in the Board’s 

experience, this evidence is sufficient to 

resolve the facts in dispute. For 

instance, declaration evidence alleging 

secondary considerations would, 

consistent with normal practice, be 

given little weight absent supporting 

documentary evidence. Thus, a 

declaration alleging commercial success 

would not be given much weight on 

institution absent sufficient supporting 

evidence demonstrating sales figures, 

etc. 

Comment 18: Several comments 

opposing the proposed rule expressed 

concern about unfairness to the 

petitioner if the patent owner withdraws 

its reliance on testimony submitted with 

the preliminary response. One comment 

suggested that the patent owner might 

be ‘‘incentivized’’ to introduce less 

supportable testimony prior to 

institution that can be withdrawn if a 

trial is instituted. Another comment 

expressed concern that, because 

eliminating the presumption may allow 

a patent owner to introduce disputes of 

material fact via expert testimony on the 

patentability of the challenged claims 

that lead to a denial of institution, the 

petitioner should be entitled to take the 

deposition of an expert whose 

declaration is submitted with the 

preliminary response. The comment 

stated that if a new expert declaration is 

submitted with the patent owner 

response, the petitioner should also be 

permitted to take the deposition of that 

expert as well. 

Response: The Office appreciates but 

does not adopt the comments. Under the 

current rule, once a trial is instituted, a 

patent owner may choose not to rely on 

testimony submitted with the 

preliminary response. CTPG, at 51. That 

would not change under the final rule. 

Once a trial commences, petitioners can 

also withdraw evidence. See Hulu, 

Paper 29, at 6 (additional evidence 

regarding the date of publication at 

issue raised more questions than it 

answered and was withdrawn). If both 

parties can withdraw their reliance on 

evidence that turns out to be weak, there 

is no unfairness. 

The Office does not believe patent 

owners will be motivated to provide 

‘‘less supportable’’ testimony from their 

declarants as a result of the rule change. 

The Office believes parties generally 

recognize that their goals are best served 

by providing the most credible 

testimony from their declarants. See 37 

CFR 42.65(a); CTPG, at 51. If, after trial 

is initiated, the patent owner withdraws 

reliance on a declarant and a declaration 

submitted with the preliminary 

response, that declarant will usually not 

be subject to a deposition on the 

withdrawn declaration. CTPG, at 51. 

Comment 19: One comment expressed 

a concern that the new rule should not 

alter the standard for instituting a trial. 

Response: The Office agrees. The final 

rule does not change the standard for 

instituting trial and does not shift the 

burden of proving unpatentability away 

from the petitioner. 

Comment 20: One comment opposing 

the rule change suggested that a 

presumption in favor of the petitioner 

should continue and should apply to all 

disputed evidentiary issues, including 

questions of whether a document is a 

printed publication. 

Response: The Office appreciates but 

does not adopt this comment. The final 

rule eliminates the presumption as to 

genuine issues of material fact. The 

Hulu decision expressly provides 

guidance on establishing a document as 

a printed publication. Hulu, Paper 29, at 

11–19. 

Comment 21: Several comments 

addressed the standard of review under 

the rule. One comment expressed 

concern that the rule does not make it 

clear how pre-institution testimony will 

be evaluated. Another stated that the 

rule should specify the burden and 

asserted that removing the summary 

judgment standard in the proposed rule 

would make Board decisions on 

disputed facts arbitrary and capricious. 

Response: The Office appreciates but 

does not adopt the comments. The final 

rule provides no presumption as to 

disputed issues of material fact. 

However, the decision in Hulu provides 

guidance on the institution standard 

and evidentiary dynamics, albeit in the 

context of a printed publication issue. 

Hulu, Paper 29, at 11–19. The Office has 

ample experience in evaluating 

declaration testimony without crossexamination in a variety of contexts and 

does not see the need to provide further 

guidance in the rule itself. Additional 

guidance on the application of the rule 

change may be provided in future 

precedential and informative Board 

decisions. 

Comment 22: Several comments 

opposing the rule change expressed 

concerns that removal of the 

presumption would violate due process 

requirements because it would allow for 

a decision not to institute based on 

unchallenged testimonial evidence. One 

comment asserted the change would be 

unconstitutional because it does not 

allow a petitioner to confront an adverse 

witness. 

Response: The Office appreciates the 

comments but disagrees the final rule 

violates due process requirements or is 

unconstitutional. Institution of AIA 

review proceedings is discretionary, and 

there is no right provided in the 

statutory framework to challenge 

testimony at the institution stage. See 35 

U.S.C. 314(a), 324(a). Under the final 

rule, both the petitioner and patent 

owner are able to submit testimonial 

evidence. The Office has ample 

experience in evaluating declaration 

testimony without cross-examination in 

a variety of contexts. Such testimony 

must be supported as appropriate, or it 

will be accorded little weight. See 37 

CFR 42.65(a); CTPG, at 51. The Board 

will consider the totality of the evidence 

presented to determine if the petitioner 

meets the threshold standard to institute 

review. 

Comment 23: A number of comments 

expressed concern that the Office did 

not provide adequate justification for 

the rule change and asserted the 

rationale for the change is inconsistent 

with the Office findings in the 2016 

rulemaking that established the 


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presumption. A few comments 

suggested that any stakeholder 

confusion caused by the rule does not 

justify abandoning the rule but should 

instead be addressed by precedential 

decisions or the next revision of the 

Trial Practice Guide. 

Response: As part of ongoing efforts to 

improve AIA proceedings, the Office 

continuously evaluates its procedures 

based on feedback from the public. 

Upon evaluation of recent feedback, the 

Office has determined that the 

presumption causes confusion at the 

institution stage and potentially 

discourages patent owners from 

submitting testimonial evidence. In 

addition, the Office’s experience is that 

having a presumption in favor of the 

petitioner at the institution stage may 

lead to results that are inconsistent with 

the statutory scheme, which places the 

burden on the petitioner. 

Although there were valid reasons for 

promulgating the original rule, the 

Office has determined that the problems 

and confusion engendered by the rule, 

discussed above, outweigh those 

reasons. The Office has ample 

experience in evaluating declaration 

testimony without cross-examination in 

a variety of contexts. The Office 

believes, therefore, that the Board will 

remain able to fairly and efficiently 

resolve factual disputes at the 

institution phase in deciding whether to 

institute the requested trial without the 

current presumption. The Office 

received numerous comments that 

support and agree with the Office’s 

rationale for the change as eliminating 

a source of confusion, removing a 

disincentive to patent owners to provide 

pre-institution testimonial evidence, 

and better according with the statutory 

standards for institution. See 35 U.S.C. 

314(a), 324(a). Accordingly, the Office 

has elected to revise its rule. 

Comment 24: A few comments 

expressed concern with the retroactive 

application of the rule change and 

requested that the rule not go into 

immediate effect. Several other 

comments stated that the Office should 

provide an opportunity for further 

discussion and consideration on this 

proposed rule change. 

Response: The Office acknowledges 

the concerns with the retroactive 

application of the rule. The change to 

eliminate the presumption will apply 

only to petitions filed on or after the 

effective date of the rule. The Office 

appreciates all comments submitted in 

response to the proposed rule and does 

not believe further discussion is needed. 

Comment 25: A few comments stated 

the rulemaking fails to comply with the 

procedural requirements imposed by the 

Administrative Procedure Act and 

Executive Order 12866. The comments 

assert that the rule making is 

significant—economically significant— 

and the 30-day comment period failed 

to provide the public a meaningful 

opportunity to respond to the 

comments. 

Response: The OMB has determined 

this rule to be not significant for 

purposes of Executive Order 12866. 

Further, the Office disagrees that the 

final rule will impose additional costs 

because no additional briefing or 

discovery is contemplated as a result of 

the rule change. 

Rulemaking Considerations 

A. Administrative Procedure Act 

(APA): This final rule revises the rules 

relating to Office trial practice for IPR, 

PGR, and CBM proceedings. The 

changes set forth in this final rule do not 

change the substantive criteria of 

patentability. These changes involve 

rules of agency procedure and 

interpretation. See Perez v. Mortg. 

Bankers Ass’n, 135 S. Ct. 1199, 1204 

(2015) (Interpretive rules ‘‘advise the 

public of the agency’s construction of 

the statutes and rules which it 

administers.’’) (citation and internal 

quotation marks omitted); Bachow 

Commc’ns, Inc. v. F.C.C., 237 F.3d 683, 

690 (D.C. Cir. 2001) (Rules governing an 

application process are procedural 

under the Administrative Procedure 

Act.); Inova Alexandria Hosp. v. 

Shalala, 244 F.3d 342, 350 (4th Cir. 

2001) (Rules for handling appeals were 

procedural where they did not change 

the substantive requirements for 

reviewing claims.); Nat’l Org. of 

Veterans’ Advocates, Inc. v. Sec’y of 

Veterans Affairs, 260 F.3d 1365, 1375 

(Fed. Cir. 2001) (Rule that clarifies the 

interpretation of a statute is 

interpretive.); JEM Broadcasting Co. v. 

F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) 

(Rules are not legislative because they 

do not ‘‘foreclose effective opportunity 

to make one’s case on the merits.’’). 

Accordingly, prior notice and 

opportunity for public comment are not 

required pursuant to 5 U.S.C. 553(b) or 

(c) (or any other law). See Perez, 135 S. 

Ct. 1199, 1206 (Notice-and-comment 

procedures are required neither when 

an agency ‘‘issue[s] an initial 

interpretive rule’’ nor ‘‘when it amends 

or repeals that interpretive rule.’’); 

Cooper Techs. Co. v. Dudas, 536 F.3d 

1330, 1336–37 (Fed. Cir. 2008) (stating 

that 5 U.S.C. 553, and thus 35 U.S.C. 

2(b)(2)(B), do not require notice and 

comment rulemaking for ‘‘interpretative 

rules, general statements of policy, or 

rules of agency organization, procedure, 

or practice’’) (quoting 5 U.S.C. 

553(b)(3)(A)). 

The Office, nevertheless, published 

the notice of proposed rulemaking for 

comment, as it sought the benefit of the 

public’s views on the Office’s proposed 

changes. See 85 FR 31728. 

B. Regulatory Flexibility Act: For the 

reasons set forth herein, the Deputy 

General Counsel for General Law of the 

USPTO has certified to the Chief 

Counsel for Advocacy of the Small 

Business Administration that changes 

adopted in this final rule will not have 

a significant economic impact on a 

substantial number of small entities. See 

5 U.S.C. 605(b). 

This final rule revises certain trial 

practice procedures before the Board in 

light of the Supreme Court’s ruling in 

SAS Institute Inc. v. Iancu, 138 S. Ct. 

1348 (2018), that a decision to institute 

an IPR under 35 U.S.C. 314 may not 

institute on fewer than all claims 

challenged in a petition. In accordance 

with that ruling, this final rule revises 

the rules of practice for instituting 

review on all challenged claims or none 

in IPR, PGR, and CBM proceedings 

before the PTAB. This final rule also 

revises the rules of practice for 

instituting a review on all grounds of 

unpatentability for the challenged 

claims that are asserted in a petition. 

Additionally, this final rule revises the 

rules to conform to the current standard 

practice of providing sur-replies to 

principal briefs and providing that a 

patent owner response and reply may 

respond to a decision on institution. 

This final rule further revises the rules 

to eliminate the presumption that a 

genuine issue of material fact created by 

the patent owner’s testimonial evidence 

filed with a preliminary response will 

be viewed in the light most favorable to 

the petitioner for purposes of deciding 

whether to institute a review. The 

changes in this final rule are procedural 

in nature, and any requirements 

resulting from these changes are of 

minimal or no additional burden to 

those practicing before the Board. 

For the foregoing reasons, the changes 

in this final rule will not have a 

significant economic impact on a 

substantial number of small entities. 

C. Executive Order 12866 (Regulatory 

Planning and Review): This rulemaking 

has been determined to be not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

D. Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563 (Jan. 18, 2011). 

Specifically, the Office has, to the extent 

feasible and applicable: (1) Made a 

reasoned determination that the benefits 


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justify the costs of the rule; (2) tailored 

the rule to impose the least burden on 

society consistent with obtaining the 

regulatory objectives; (3) selected a 

regulatory approach that maximizes net 

benefits; (4) specified performance 

objectives; (5) identified and assessed 

available alternatives; (6) involved the 

public in an open exchange of 

information and perspectives among 

experts in relevant disciplines, affected 

stakeholders in the private sector, and 

the public as a whole, and provided 

online access to the rulemaking docket; 

(7) attempted to promote coordination, 

simplification, and harmonization 

across government agencies and 

identified goals designed to promote 

innovation; (8) considered approaches 

that reduce burdens and maintain 

flexibility and freedom of choice for the 

public; and (9) ensured the objectivity of 

scientific and technological information 

and processes. 

E. Executive Order 13771 (Reducing 

Regulation and Controlling Regulatory 

Costs): This final rule is not expected to 

be an Executive Order 13771 (Jan. 30, 

2017) regulatory action because this 

final rule is not significant under 

Executive Order 12866 (Sept. 30, 1993). 

F. Executive Order 13132 

(Federalism): This rulemaking does not 

contain policies with federalism 

implications sufficient to warrant 

preparation of a Federalism Assessment 

under Executive Order 13132 (Aug. 4, 

1999). 

G. Executive Order 13211 (Energy 

Effects): This rulemaking is not a 

significant energy action under 

Executive Order 13211 because this 

rulemaking is not likely to have a 

significant adverse effect on the supply, 

distribution, or use of energy. Therefore, 

a Statement of Energy Effects is not 

required under Executive Order 13211 

(May 18, 2001). 

H. Executive Order 12988 (Civil 

Justice Reform): This rulemaking meets 

applicable standards to minimize 

litigation, eliminate ambiguity, and 

reduce burden as set forth in sections 

3(a) and 3(b)(2) of Executive Order 

12988 (Feb. 5, 1996). 

I. Executive Order 13045 (Protection 

of Children): This rulemaking does not 

concern an environmental risk to health 

or safety that may disproportionately 

affect children under Executive Order 

13045 (Apr. 21, 1997). 

J. Executive Order 12630 (Taking of 

Private Property): This rulemaking will 

not affect a taking of private property or 

otherwise have taking implications 

under Executive Order 12630 (Mar. 15, 

1988). 

K. Congressional Review Act: Under 

the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), prior to 

issuing any final rule, the USPTO will 

submit a report containing the rule and 

other required information to the United 

States Senate, the United States House 

of Representatives, and the Comptroller 

General of the Government 

Accountability Office. The changes in 

this final rule are not expected to result 

in an annual effect on the economy of 

$100 million or more, a major increase 

in costs or prices, or significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of United States-based 

enterprises to compete with foreignbased enterprises in domestic and 

export markets. Therefore, this 

rulemaking is not a ‘‘major rule’’ as 

defined in 5 U.S.C. 804(2). 

L. Unfunded Mandates Reform Act of 

1995: The changes set forth in this final 

rule do not involve a federal 

intergovernmental mandate that will 

result in the expenditure by state, local, 

and tribal governments, in the aggregate, 

of $100 million (as adjusted) or more in 

any one year, or a federal private-sector 

mandate that will result in the 

expenditure by the private sector of 

$100 million (as adjusted) or more in 

any one year, and will not significantly 

or uniquely affect small governments. 

Therefore, no actions are necessary 

under the provisions of the Unfunded 

Mandates Reform Act of 1995. See 2 

U.S.C. 1501 et seq. 

M. National Environmental Policy 

Act: This rulemaking will not have any 

effect on the quality of the environment 

and is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

N. National Technology Transfer and 

Advancement Act: The requirements of 

section 12(d) of the National 

Technology Transfer and Advancement 

Act of 1995 (15 U.S.C. 272 note) are not 

applicable because this rulemaking does 

not contain provisions that involve the 

use of technical standards. 

O. Paperwork Reduction Act: The 

Paperwork Reduction Act of 1995 (44 

U.S.C. 3501–3549) requires that the 

Office consider the impact of paperwork 

and other information collection 

burdens imposed on the public. This 

final rule does not involve an 

information collection requirement that 

is subject to review by the OMB under 

the Paperwork Reduction Act of 1995 

(44 U.S.C. 3501–3549). This rulemaking 

does not add any additional information 

requirements or fees for parties before 

the Board. Therefore, the Office is not 

resubmitting information collection 

packages to OMB for its review and 

approval because the revisions in this 

rulemaking do not materially change the 

information collections approved under 

OMB control number 0651–0069. 

Notwithstanding any other provision 

of law, no person is required to respond 

to, nor shall any person be subject to, a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects in 37 CFR Part 42 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

For the reasons set forth in the 

preamble, the Office amends part 42 of 

title 37 as follows: 

PART 42—TRIAL PRACTICE BEFORE 

THE PATENT TRIAL AND APPEAL 

BOARD 

■ 1. The authority citation for part 42 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 

135, 311, 312, 316, 321–326; Pub. L. 112–129, 

125 Stat. 284; and Pub. L. 112–274, 126 Stat. 

2456. 

■ 2. Revise § 42.23 to read as follows: 

§ 42.23 Oppositions, replies, and surreplies. 

(a) Oppositions, replies, and surreplies must comply with the content 

requirements for motions and, if the 

paper to which the opposition, reply, or 

sur-reply is responding contains a 

statement of material fact, must include 

a listing of facts that are admitted, 

denied, or cannot be admitted or 

denied. Any material fact not 

specifically denied may be considered 

admitted. 

(b) All arguments for the relief 

requested in a motion must be made in 

the motion. A reply may only respond 

to arguments raised in the 

corresponding opposition, patent owner 

preliminary response, patent owner 

response, or decision on institution. A 

sur-reply may only respond to 

arguments raised in the corresponding 

reply and may not be accompanied by 

new evidence other than deposition 

transcripts of the cross-examination of 

any reply witness. 

■ 3. Amend § 42.24 by revising the 

section heading and paragraph (c) 

introductory text and adding paragraph 

(c)(4) to read as follows: 


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Federal Register / Vol. 85, No. 237 / Wednesday, December 9, 2020 / Rules and Regulations 79129 

§ 42.24 Type-volume or page limits for 

petitions, motions, oppositions, replies, and 

sur-replies. 

* * * * * 

(c) Replies and sur-replies. The 

following word counts or page limits for 

replies and sur-replies apply and 

include any statement of facts in 

support of the reply. The word counts 

or page limits do not include a table of 

contents; a table of authorities; a listing 

of facts that are admitted, denied, or 

cannot be admitted or denied; a 

certificate of service or word count; or 

an appendix of exhibits. 

* * * * * 

(4) Sur-replies to replies to patent 

owner responses to petitions: 5,600 

words. 

* * * * * 

■ 4. Amend § 42.71 by revising the third 

sentence of paragraph (d) introductory 

text to read as follows: 

§ 42.71 Decision on petitions or motions. 

* * * * * 

(d) * * * The request must 

specifically identify all matters the party 

believes the Board misapprehended or 

overlooked, and the place where each 

matter was previously addressed in a 

motion, an opposition, a reply, or a surreply. * * * 

* * * * * 

■ 5. Revise § 42.108 to read as follows: 

§ 42.108 Institution of inter partes review. 

(a) When instituting inter partes 

review, the Board will authorize the 

review to proceed on all of the 

challenged claims and on all grounds of 

unpatentability asserted for each claim. 

(b) At any time prior to a decision on 

institution of inter partes review, the 

Board may deny all grounds for 

unpatentability for all of the challenged 

claims. Denial of all grounds is a Board 

decision not to institute inter partes 

review. 

(c) Inter partes review shall not be 

instituted unless the Board decides that 

the information presented in the 

petition demonstrates that there is a 

reasonable likelihood that at least one of 

the claims challenged in the petition is 

unpatentable. The Board’s decision will 

take into account a patent owner 

preliminary response where such a 

response is filed, including any 

testimonial evidence. A petitioner may 

seek leave to file a reply to the 

preliminary response in accordance 

with §§ 42.23 and 42.24(c). Any such 

request must make a showing of good 

cause. 

■ 6. Amend § 42.120 by revising 

paragraph (a) to read as follows: 

§ 42.120 Patent owner response. 

(a) Scope. A patent owner may file a 

single response to the petition and/or 

decision on institution. A patent owner 

response is filed as an opposition and is 

subject to the page limits provided in 

§ 42.24. 

* * * * * 

■ 7. Amend § 42.208 by revising 

paragraphs (a), (b), and (c) to read as 

follows: 

§ 42.208 Institution of post-grant review. 

(a) When instituting post-grant 

review, the Board will authorize the 

review to proceed on all of the 

challenged claims and on all grounds of 

unpatentability asserted for each claim. 

(b) At any time prior to institution of 

post-grant review, the Board may deny 

all grounds for unpatentability for all of 

the challenged claims. Denial of all 

grounds is a Board decision not to 

institute post-grant review. 

(c) Post-grant review shall not be 

instituted unless the Board decides that 

the information presented in the 

petition demonstrates that it is more 

likely than not that at least one of the 

claims challenged in the petition is 

unpatentable. The Board’s decision will 

take into account a patent owner 

preliminary response where such a 

response is filed, including any 

testimonial evidence. A petitioner may 

seek leave to file a reply to the 

preliminary response in accordance 

with §§ 42.23 and 42.24(c). Any such 

request must make a showing of good 

cause. 

* * * * * 

■ 8. Amend § 42.220 by revising 

paragraph (a) to read as follows: 

§ 42.220 Patent owner response. 

(a) Scope. A patent owner may file a 

single response to the petition and/or 

decision on institution. A patent owner 

response is filed as an opposition and is 

subject to the page limits provided in 

§ 42.24. 

* * * * * 

Andrei Iancu, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2020–27048 Filed 12–8–20; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Part 52 

[EPA–HQ–OAR–2019–0611; FRL–10017–82– 

OAR] 

RIN 2060–AU54 

Implementation of the Revoked 1997 8- 

Hour Ozone National Ambient Air 

Quality Standards; Updates to 40 CFR 

Part 52 for Areas That Attained by the 

Attainment Date; Withdrawal of Direct 

Final Rule 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Withdrawal of direct final rule. 

SUMMARY: Due to the receipt of adverse 

comment, the Environmental Protection 

Agency (EPA) is withdrawing the 

October 9, 2020, direct final rule to 

update the Code of Federal Regulations 

(CFR) to codify its findings that nine 

areas in four states attained the revoked 

1997 8-hour ozone National Ambient 

Air Quality Standards (NAAQS) by the 

applicable attainment dates. The EPA 

will address all comments received in a 

subsequent final rule for which the EPA 

will not institute a second comment 

period. 

DATES: The direct final rule published 

on October 9, 2020 (85 FR 64046) is 

withdrawn effective December 9, 2020. 

FOR FURTHER INFORMATION CONTACT: Ms. 

Virginia Raps, Air Quality Policy 

Division, Office of Air Quality Planning 

and Standards, U.S. Environmental 

Protection Agency, Mail Code: C539–01, 

Research Triangle Park, NC 27711, 

telephone (919) 541–4383; fax number: 

(919) 541–5315; email address: 

raps.virginia@epa.gov. 

SUPPLEMENTARY INFORMATION: On 

October 9, 2020, the EPA published a 

direct final rule (85 FR 64046) to codify 

its findings that nine areas in four states 

attained the revoked 1997 8-hour ozone 

NAAQS by the applicable attainment 

dates. In the proposal for the direct final 

rule published on the same day (85 FR 

64089), the EPA stated that written 

comments must be received on or before 

November 9, 2020. The EPA stated that 

if any relevant adverse comments are 

received on the proposal, the EPA will 

publish a timely withdrawal of the 

direct final rule in the Federal Register. 

On November 2, 2020, an anonymous 

comment was posted in the docket that 

the EPA interprets as relevant and 

adverse. Therefore, the EPA is 

withdrawing the direct final rule and 

will publish a subsequent final rule 

wherein the EPA will address all 

comments received. The EPA will not 


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