AIPLA Comments to USPTO on the Proposed 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

 AIPLA appreciates the Office’s efforts to improve AIA trial proceedings, which have become pervasive since their initial implementation in September 2012. AIPLA has expressed opinions on several issues relevant to the proposed rulemaking. AIPLA supports the proposed rulemaking that is the subject of this comment, including updating the rules to comply with the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), expressly providing for filing of sur-reply briefs, and removing the presumption favoring petitioners on contested facts based on pre-institution testimonial evidence from the patent owner under 37 C.F.R. §§ 42.108(c) and 42.208(c). We address each change presented in the proposed rules in the comments that follow.