PTAB wants new rules to tackle IPR imbalance
The US Patent Trial and Appeal Board (PTAB) has proposed to remove a key advantage currently held by parties looking to have patents cancelled.
The PTAB this week laid out new proposed rules that, if implemented, would eliminate a presumption in favour of the petitioner on disputes over expert testimony at the earliest stage of inter partes reviews (IPR).
At the moment, if a patent owner’s response to an IPR petition includes expert evidence that disputes the material facts laid out in the petition, then the PTAB will look at that evidence in the light most favourable to the petitioner.
Members of the public will have the opportunity to comment on the proposed changes, with a consultation period lasting 30 days having begun on Tuesday, May 26.
The proposals may be aimed at appeasing inventors and patent owners who have long criticised the PTAB’s role in quashing patents.
Explaining the proposed changes, the PTAB said it was concerned that the current practice was discouraging patent owners from filing any testimonial evidence in response to IPR petitions, because “some patent owners believe that such testimony will not be given any weight at the time of institution”.
David Reese, patent attorney at Finnegan, said the rules could prompt a “resurgence” in patent owners filing testimonial evidence “in an effort to knock out the petition at the institution stage”.
But Reese warned it was too early to know exactly what effect the rules, if adopted, would have on patent owners’ strategy: “Even with adoption of this rule, patent owners may still be hesitant to file testimonial evidence with their preliminary responses because of the lack of pre-institution discovery and for fear that institution under the new rule would make it even more difficult for patent owner to overcome the institution decision during trial and achieve a favourable final written decision.”
Also included in the proposed rules are provisions intended to formalise the US Supreme Court’s 2018 SAS Institute decision, limiting the PTAB’s discretion in choosing which challenged patent claims to review.
In SAS, the Supreme Court told the PTAB that it could not pick and choose which patent claims to examine when instituting IPR. If a party petitions for IPR of certain patent claims, the PTAB now has to either review all the challenged claims or not at all.
That decision forced a sharp change in practice from the PTAB, which previously considered which challenged claims to review in IPR proceedings to be at its own discretion. The rules proposed this week would codify the new practice further.
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