By Dinesh N. Melwani, Bookoff McAndrews PLLC and Paromita Chatterjee and Arvind Jairam, Paul Hastings LLP

Original article published in Landslide Magazine, Volume 9, Number 4 ©2017 by the American Bar Association.

On May 2, 2016, long-awaited rule changes went into effect for practice before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). One of the newly implemented rules offers patent owners an opportunity to provide a more robust preliminary response to a petition for inter partes review (IPR), covered business method (CBM) review, or post-grant review (PGR), with “new” testimonial evidence. Previously, petitioners could include testimonial evidence prepared for the proceeding with their petitions but patent owners were precluded from doing so with their preliminary responses, an asymmetric situation that unfairly favored petitioners, according to some commentators. This article reviews tactical considerations for and against inclusion of new testimonial evidence in patent owner preliminary responses. The authors also review IPR proceedings filed after the rule changes took effect, to gauge the prevalence and impact of new testimonial evidence submitted by patent owners in support of their preliminary responses.

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This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article reflects only the opinion of the authors and is not attributable to Paul Hastings LLP or Bookoff McAndrews, PLLC, or either firm’s clients.