C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart A—Trial Practice and Procedure

37 C.F.R. § 42.24

Type-volume or page limits for petitions, motions, oppositions, replies, and sur-replies

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(a) Petitions and motions. (1) The following word counts or page limits for petitions and motions apply and include any statement of material facts to be admitted or denied in support of the petition or motion. The word count or page limit does not include a table of contents, a table of authorities, mandatory notices under § 42.8, a certificate of service or word count, or appendix of exhibits or claim listing.

(i) Petition requesting inter partes review: 14,000 words.

(ii) Petition requesting post-grant review: 18,700 words.

(iii) Petition requesting covered business method patent review: 18,700 words.

(iv) Petition requesting derivation proceeding: 14,000 words.

(v) Motions (excluding motions to amend): 15 pages.

(vi) Motions to Amend: 25 pages.

(2) Petitions to institute a trial must comply with the stated word counts but may be accompanied by a motion to waive the word counts. The petitioner must show in the motion how a waiver of the word counts is in the interests of justice and must append a copy of proposed petition exceeding the word count to the motion. If the motion is not granted, the proposed petition exceeding the word count may be expunged or returned. Any other motion to waive word counts or page limits must be granted in advance of filing a motion, opposition, or reply for which the waiver is necessary.

(b) Patent owner responses and oppositions. The word counts or page limits set forth in this paragraph (b) do not include a listing of facts which are admitted, denied, or cannot be admitted or denied.

(1) The word counts for a patent owner preliminary response to petition are the same as the word counts for the petition.

(2) The word counts for a patent owner response to petition are the same as the word counts for the petition.

(3) The page limits for oppositions are the same as those for corresponding motions.

(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.

(1) Replies to patent owner responses to petitions: 5,600 words.

(2) Replies to oppositions (excluding replies to oppositions to motions to amend): 5 pages.

(3) Replies to oppositions to motions to amend: 12 pages.

(4) Sur-replies to replies to patent owner responses to petitions: 5,600 words.

(d) Certification. Any paper whose length is specified by type-volume limits must include a certification stating the number of words in the paper. A party may rely on the word count of the word-processing system used to prepare the paper.

[81 FR 18765, Apr. 1, 2016, as amended at 81 FR 24703, Apr. 27, 2016; 85 FR 79128, Dec. 9, 2020]
Notes of Decisions
Cited in 7 cases (4 in the last 5 years), 2016–2023 · leading case: Sas Inst., Inc. v. Complementsoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016).
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Sas Inst., Inc. v. Complementsoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016). · cites it 4× “See 37 C.F.R. § 42.24 (c)(1) (2012). 4 Finally, to be clear, it is uncertain whether SAS will ultimately be able to show unpatentability of the ’936 patent claim 4 even under the construction of “graph- ical representations of data flows” that the Board adopted and that we agree…”
Dell Inc. v. Acceleron, LLC., 818 F.3d 1293 (Fed. Cir. 2016). “Dell submitted a reply maintaining its invalidity position, as implicitly authorized by 37 C.F.R. § 42.24 (c)(1). In that reply, Dell argued that the caddies required by claim 3 are found not only in Hipp’s articulating door 262 (previously argued) but also in Hipp’s…”
Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365 (Fed. Cir. 2023). · cites it 2× “See 37 C.F.R. § 42.24 . Parus further argues that, according to our decision in Aqua Products v.”
Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035 (Fed. Cir. 2022). “The Board did not err in finding Intuitive estopped from maintaining the Prisco/Cooper 6 37 C.F.R. § 42.24 (a)(i) limits petitions requesting inter partes review to 14,000 words.”
Parus Holdings, Inc. v. Google LLC (Fed. Cir. 2023). · cites it 2× “See 37 C.F.R. § 42.24 . Parus further argues that, according to our decision in Aqua Products v.”
Intuitive Surgical, Inc. v. Ethicon LLC (Fed. Cir. 2022). “The Board did not err in finding Intuitive estopped from maintaining the Prisco/Cooper 6 37 C.F.R. § 42.24 (a)(i) limits petitions requesting inter partes review to 14,000 words.”
Fundamental Innovation Sys. Int'l LLC v. ZTE Corp. (N.D. Tex. 2019). “See 37 C.F.R. 42.24, 42.104. This Court thus remains bound by Shaw’s section 315(e)(2) interpretation.”
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