Preliminary Responses Accompanied by Declaration Evidence: Updated 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 approaching a year removed from the rule modification, some updated results.

To date, the ability to introduce new evidence during the preliminary proceeding seems to have done little for patentees.

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 8 month window of Board decisions, only 30% of filers availed themselves of the new option (this is a slight drop from the initial percentage of 38% I found last fall.) Of those 144 patentees availing themselves of the new rule, 69 of the Institution Decisions failed to mention the new evidence.

In 65 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 21 decisions (charted in red). Of course, it is hard to gauge the value of these submissions in the the 69 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.

While the data is still early, clear trends are emerging as to efficacy. That said, it appears these spotty results still militate in favor of continued caution for patentees.

Click here to view table.

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. Petitions in the unpredictable arts (Bio/Pharma) seem more likely to result in stalemate (contested fact). This may be due to the narrow focus of these disputes/claims and the high level of skill typical of declarants in this space.