The perils of presenting evidence

The USPTO has proposed changes to the post-grant review rules to allow patent owners to present new testimonial evidence to support their preliminary response. Benjamin Evans, Gilberto Espinoza and Martin Stern of Michael Best & Friedrich examine the implications.

The US Patent and Trademark Office (USPTO) has published a set of proposed rule changes to improve the effectiveness of the rules that govern inter partes review, post-grant review, and covered business method review trials. One of those rules would allow a patent owner to present new testimonial evidence (eg, expert or factual testimony) in support of its preliminary response to a petition.

After a petition is filed, a patent owner may submit a preliminary response explaining the reasons why the Patent Trial and Appeal Board (PTAB) should deny the petition. The current rules bar a patent owner from presenting new testimonial evidence in support of the preliminary response. This bar does not apply to testimonial evidence that was submitted in another legal proceeding such as district court litigation or during the prosecution of the patent. Patent owners have criticised this rule because it deprives them the opportunity to present expert testimony to rebut the expert testimony submitted by the petitioner.  

While a patent owner may present new testimonial evidence after the institution of a trial proceeding, the ultimate goal of any patent owner is to prevent the institution of the proceeding in the first place, thereby saving it the time and expense of conducting a full trial.