Revised rules for PTAB trials, which were published for comment in August 2015, have now been finalized and will be effective for all petitions filed on or after May 2, 2016.
As we previously reported, the new rules clarify procedures for addressing when the PTAB will apply a Phillips-type claim construction for patents that may expire before a final written decision is issued; substitute word count limits for briefs instead of page limits; incorporate a Rule 11-like certification for papers submitted to the PTAB, and revise the time period for exchange of demonstrative exhibits prior to final hearing.
A more significant change may be the revisions to 37 C.F.R. §§ 42.107, 42.108, and 42.208, which will now permit the patent owner to submit testimonial evidence in support of its optional preliminary response to a petition, and will also permit the petitioner to seek leave to file a reply to the preliminary response. Parties that have a petition ready to file before the effective date may want to consider whether they want to get their petition on file before May 2, to prevent the patent owner from taking advantage of the opportunity to support a preliminary response with testimony.
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 an inter partes review
The value of using testimony in support of a preliminary response remains to be seen, and it will be interesting to see how such evidence is relied on by the PTAB in future institution decisions. As acknowledged in the Federal Register notice, at this point “[i]t is premature to assess the effect of allowing patent owner to present new testimonial evidence at the preliminary stage.”
The revised rules state that “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 an inter partes review” or “post-grant review.” That statement in the rules, as well as the PTAB’s statement in another context that “little to no weight is given to testimony of declarants who are not subject to cross-examination,” suggest that testimony in support of a preliminary response may actually be of little or no value in convincing the PTAB not to institute an AIA trial. The Federal Register notice also states that, “[i]n appropriate circumstances, a panel, in its discretion, may order some limited discovery, including cross-examination of witnesses, before institution.” How and when PTAB panels exercise that discretion to order cross-examination of witnesses before institution may also be important in considering the potential value of using testimony in support of a preliminary response.