The Board recently held its final Boardside Chat of the year. The focus of the presentation was the proposed rule package that was published in late August. After a brief overview of the proposed changes, the panel discussed the background, rationale, and implications of the proposed rules. Here’s a short recap of two of the main takeaways.
Testimonial evidence with its preliminary response
Under the proposed rules, patent owners would be permitted to submit new testimonial evidence (i.e. expert declarations) along with their preliminary responses to petitions, something that is not allowed under the current rules. According to Lead Judge Gianetti, the Board anticipates that this change will be helpful to patent owners looking to prove that a document submitted by the petitioner is not prior art or rebutting the petitioner’s assertions that a combination of prior art references made a claimed invention obvious.
The panel also clarified that the presumption in favor of the petitioner as to any factual dispute material to the institution decision under the proposed rules applies only to new testimonial evidence, and does not apply to other types of evidence that may be submitted with the preliminary response.
While many patent owners have greeted the possibility of submitting new testimonial evidence to defeat institution of an IPR trial as a balancing of the scales, submitting evidence may have the unintended consequence of increasing the chances that a trial will be instituted. If new evidence creates a factual dispute, rather than highlights a weakness in the petition, the evidence could increase the chances that a trial will be instituted to resolve competing views of the facts. A rule change to allow more evidence pre-institution will provide patent owners with another tool—which should be used carefully.
Potential pilot program
In addition to the proposed rule changes, the panel discussed a potential pilot program the PTAB is considering. Under the pilot program, a single APJ would decide whether to institute an IPR trial, and two additional APJs not involved in the determination on institution would be assigned to complete the three-judge panel to conduct the IPR trial, if instituted.
This is billed as an efficiency measure by the PTAB, reflecting its commitment to complying with the Congressional mandate to conclude post-grant trials within one year. While it’s not expected to have a substantive impact, it could lead to more motions to reconsider or more unexpected decisions, as issues that might have been surfaced and addressed by a three-judge panel get overlooked by a single judge. Some have expressed concerns about this, including Dennis Crouch at Patently-O.