A Review Of Patent Owners' Early Expert Testimony At PTAB


A Review Of Patent Owners’ Early Expert Testimony At PTAB

On May 2, 2016, the Patent Trial and Appeal Board began allowing expert declarations in preliminary responses by patent owners responding to inter partes review and covered business method petitions. Commentators have speculated whether such declarations would be utilized and what effect (if any) such declarations would have on institution decisions. In particular, commentators noted that because genuine issues of material fact are to be viewed “in the light most favorable to the petitioner” in deciding on institution (codified in 37 C.F.R. § 42.108(c)) expert declarations submitted with preliminary responses would likely not alter the landscape for PTAB proceedings. This article provides insights into how patent owners have utilized expert declarations with preliminary responses, and how the PTAB has relied upon such expert testimony at the institution decision stage.

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