Is Patentee Evidence Too Much Additional Work for the Board?

As discussed previously, the USPTO has issued a Request for Information (RFI) entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The RFI poses 17 questions, two of which were addressed in previous posts. Namely: Is there any circumstance where a broadest reasonable claim interpretation (BRI) should not be used for an unexpired patent? (here); and, Should any changes be made to motion to amend practice? (here

Next up is the third query of the list: 
3. Should new testimonial evidence be permitted in a Patent Owner Preliminary Response? If new testimonial evidence is permitted, how can the Board meet the statutory deadline to determine whether to institute a proceeding while ensuring fair treatment of all parties?

Before tackling this issue, let's consider the rationale behind the preliminary response. 

In the days of inter partes patent reexamination, there was no opportunity for a patentee to submit comments to the USPTO prior to the reexamination order. Instead, the examiner reviewed only the reexamination request of the patent challenger prior to deciding the propriety of reexamination. Patentees decried this system as unfair. That is, they argued that had they been able to present their positions to the examiner, the years-long reexamination proceeding could have been avoided. In response to this criticism, Congress provided a preliminary response mechanism for the post-grant patent challenges of the America Invents Act (AIA,. 

When implementing this preliminary response mechanism, the Patent Trial & Appeal Board (PTAB) determined that preliminary responses should not include new testimonial evidence. Patentees complained that this system was still unbalanced as AIA petitions are almost always accompanied by supporting evidentiary declarations from petitioners (e.g., testimony on the scope and content of the art from one skilled in the relevant art). Justifying this imbalance, the PTAB explained that the trail only begins upon institution, not before. And, more importantly, that the preliminary response could not include new evidence to ensure the Board meet its statutory deadline for institution. 35 U.S.C §315(b). 

Now, the PTAB is reconsidering this imbalance as part of the broader effort to refine these important alternatives to patent litigation. 

As noted in the question reproduced above, the concern of the PTAB is that allowing such evidence from patentees, while clearly "fairer," would create additional work that may degrade the Board's inability to meet their deadline for institution. This concern is significant given the volume of filings being submitted to the PTAB. The Board must issue a decision within 3 months from the time of submission of the preliminary response, by statute. Simply allowing such submissions in the interests of fairness (and the 100s of additional pages of declarations that would come in the door) is just not administratively feasible. 

There is a strong public interest in maintaining the current quality and speed of PTAB Trial Orders. As such, likely options are those that would provide for a more balanced preliminary proceeding, but, at the same time, would not materially increase the Board's workload. 

Some such options include: 

  1. Limited Declaration Option - The Board could offer a "page sharing" option. That is, a preliminary response in IPR is limited to 60 pages in total. A targeted preliminary response addressing key issues only (claim construction, inherency, combinability, etc.) might be 20-25 pages. In such a case, a 35-40 page supporting declaration would "share" the remaining pages allocated to the patentee. With such an option, the Board would still be reviewing 60 pages of patentee content. While certainly not the same as the petitioner's unlimited declaration, the ability to target key issues (what most such submissions do anyway) would be enhanced by new testimonial evidence.
  2. Patentee Observation Option - The patentees discovery period begins after institution. If the patentee had the option of moving this period to the preliminary proceeding, they could depose the petitioner's declarant and submit observations in lieu of a full blown declaration of an altogether new declarant. To offset the additional materials to be reviewed, as in option 1 above, the PTAB might consider limiting the response under this option to 40 pages + 20 pages of observations (IPR); 60 pages + 20 pages of observations (PGR).  While the patentee would not gain a full declaration, the focused observations would allow some procedural re-balancing without overburdening the Board with additional declaration materials.   

It may be with option 2 that patentees would prefer to await trial institution rather than expend the resources before trial, or lose the benefit of the PTAB's Order prior to deposition, for that reason, Option 1 would likely be favored by patentees. 

Any change to existing practices PTAB must maintain the integrity of a system that has become a welcomed alternative to the high cost of patent litigation.