A final rule has been published with amendments to the rules of practice before the PTAB. The amendments are effective May 2 and apply to both petitions filed on or after May 2 as well as ongoing AIA preliminary preceding or trial before the office. The rules make several changes, the most notable being:
- Allowing patent owners to submit expert declarations with their preliminary responses
- Requiring a Fed. R. Civ. P. 11-type certification for papers filed in a preceding and procedures for sanctions if the certification has been violated
- Allowing a party to request district court-type claim constructions for a patent if the party certifies that it will expire within 18 months of the Notice of Filing Date Accorded
- Replacing page limits with word count limits for several documents
While it will take time for the impact of these rules on PTAB practice to become clear, we expect patent owners to immediately start submitting expert rebuttal declarations with their preliminary responses. The PTAB’s statistics as of February 29, 2016 show that currently about 38% of IPR petitions are denied. But if an IPR is instituted, then patent owners only have a 13% chance of having no instituted claims found unpatentable. These numbers show that a patent owner should do what they can to avoid institution, and in many cases that will likely include taking advantage of this new opportunity to file expert declarations with their preliminary responses.
Does the ability of patent owners to submit expert testimony pre-institution mean that the institution rate will significantly drop? It will likely have an effect, but I wouldn’t expect a sea-change. For one thing, amended rule § 42.108 provides that “a genuine issue of material fact created by [the patent owner’s] testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” See also § 42.208(c) (CBM/PGR counterpart). While a patent owner’s expert declaration may prevent institution in some instances, it seems likely that more often than not a thorough declaration from a petitioner’s expert, even when contrasted with a rebuttal declaration, would at least create a genuine fact issue supporting institution. Further, statistics show that patent owners face an up-hill battle post-institution even with the opportunity to submit expert testimony. It follows that the ability to submit rebuttal expert testimony, whether pre- or post-institution, may have limited effect on the ultimate outcome.