Preliminary Response Evidence Should Focus on Technology

Preliminary Responses Accompanied by Declaration Evidence: Updated Results

Back on May 1st of 2016, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints of patentees who claimed they were disadvantaged by previous rules precluding such new evidence from accompanying a preliminary response. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence, and that absent evidence in kind from patentees, institution was unavoidable.  I had my doubts as to whether this new mechanism would be the boon that patentees had hoped.

Now a year removed, some updated results. 

To date, the ability to introduce new evidence during the preliminary proceeding seems to have provided only marginal relief for patentees. 

In the below chart the start date of August 15th was chosen to capture those Institution Decisions having preliminary responses due on or after May 15th 2016. In this 9 month window of Board decisions, roughly 30% of filers availed themselves of the new option (this is a slight drop from the initial percentage of 38% I found initially, last fall.)  Of those 276 patent owners availing themselves of the new rule, 53% of the Institution Decisions failed to mention the new evidence at all. And, notably, only 12% of the Institution Decisions relied on the testimonial evidence to deny institution.

In 95 of the Institution Decisions, charted below in orange, the Board considered the evidence when assessing a factual dispute between the parties (likely disputing petitioner declaration evidence, the dispute construed in favor of petitioner for institution purposes). The new evidence was cited as supporting the Board’s Decision not to institute an IPR in only 34 of a possible 276 decisions (charted in red). Of course, it is hard to gauge the value of these submissions in the 147 decisions which did not reference the evidence. For example, although unreferenced, the evidence may have nevertheless reinforced a Board determination one way or the other.

As can be seen in the further chart below, the most effective testimonial submissions during the preliminary proceeding are directed to the technology itself. That is, either explaining a missing claim feature from the perspective of one skilled in the art (59% of cases), or undermining the proffered obvious rationale of the petitioner (39% of cases).

While the data is still modest, clear trends are emerging as to efficacy.  That said, it appears these spotty results still militate in favor of continued caution for patentees.

Scott A. McKeown is an author of the Patents Post Grant.