Claim construction standard. The USPTO applies a broadest reasonable interpretation (BRI) claim construction standard to unexpired patents. Under the new rule, either party may request a Phillips-type construction by motion if the party certifies that the patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to a Petition. The PTAB will then hold a conference call with the parties to address the issue and discuss any need for briefing.

Patent owner's preliminary response. Patent owners will now be allowed to submit new testimonial evidence, without any limit on scope, along with a preliminary response. However, if the testimonial evidence creates a general issue of material fact, the issue will be resolved in favor of the petitioner solely for institution purposes. In some cases, the USPTO may also order limited discovery before institution, including cross examination of the witness. Additionally, the USPTO may determine whether the petitioner will be allowed to file a pre-institution reply to the patent owner's testimonial evidence on a case-by-case basis.

Rule 11-type certification. This final rule specifically incorporates the requirements of 37 C.F.R. § 11.18 to require parties to include a Rule 11-type certification for papers filed with the PTAB, with a provision for sanctions for noncompliance. As with FRCP 11, the final rule will require service of a proposed motion for sanctions on the other party to allow sufficient information and time to correct the allegedly sanctionable content.

Word count. The final rule adopts a word count limit for the petition, patent owner preliminary response, patent owner response, and petitioner's reply brief. All other briefing will utilize the USPTO's current page limit. Notably, with the use of word counts for the main briefings, petitions will no longer be reviewed to determine if any claim charts contain argument.

Patent owner's motion to amend. The USPTO will continue to follow the standards set forth in Idle Free Systems, Inc. v. Bergstrom, Inc. and MasterImage 3D, Inc. v. RealD Inc. (IPR2012-00027, Paper 26 (PTAB June 11, 2013) and IPR2015-00040, Paper 42 (PTAB July 15, 2015)). In particular, the USPTO noted it does not anticipate changing its requirement that the patent owner bears the ultimate burden of persuasion on patentability of proposed substitute claims in a motion to amend.

Additional Discovery. The USPTO stated it would continue to follow the standard applied in Garmin International, Inc. v. Cuozzo Speed Technologies, LLC, and apply the following factors on a case-by-case basis when determining whether additional discovery in an inter partes review was necessary: