Preliminary Responses Accompanied by Declaration Evidence: Early Results

Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses. The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence. I had my doubts.

Now that we are some 5 months removed from the rule modification, early results are in.

While the data sample is still quite small, the introduction of new evidence seems to have done little for patentees thus far.

In the below chart the start date of August 15th was chosen to capture those Institution Decisions having preliminary responses due on or after May 15th. In this 7 week window of Board decisions, only 38% of filers availed themselves of the new option (presumably the number has since risen as filers in May/June might not have had sufficient time to assemble a fulsome declaration). Of those 67 patentees availing themselves of the new rule, 43 of the Institution Decisions failed to mention the new evidence.

In 16 of the Institution Decisions, charted below in orange, the Board found that the evidence created an issue of material fact (likely disputing petitioner declaration evidence, the dispute construed in favor of petitioner for institution purposes). The new evidence was cited approvingly in only 8 decisions (charted in red). Of course, it is hard to gauge the value of these submissions in the the 43 decisions which did not reference the evidence. For example, although unreferenced, the evidence may have nevertheless reinforced a Board determination one way or the other.

As noted above, the data set is still in its infancy. Likewise, the Board itself is still acclimating to this new dynamic. That said, it appears these spotty results still militate in favor of continued caution for patentees.

As to the those cases in which the new evidence was cited, it is interesting to note that there appears to be some difference in efficacy based on technology. In other words, petitions in the unpredictable arts seem incrementally more likely to result in stalemate (contested fact) determinations.

Again, admittedly the data set here is small. But, where the art is unpredictable, dueling declarants appear more likely to lead to institution. As deposition of petitioner declarants follows institution, patentees previewing their evidentiary hand may find mostly downside. Just some things to keep an eye on going forward.