Bass, Berry & Sims attorney Michael Kiklis commented for a Law360 article about a new rule proposed by the U.S. Patent and Trademark Office (USPTO) for America Invents Act (AIA) trials that would remove a pre-trial presumption favoring petitioners. The existing rule provides that a genuine issue of material fact created by the patent owner’s testimonial evidence in a preliminary response would be viewed in the light most favorable to the petitioner. The proposed rule would remove this presumption and instead apply a totality of evidence test. This proposed rule marks a continuing trend by the Patent Trial and Appeal Board to make AIA trials more friendly to patent owners.
Mike commented on whether the patent owner should use testimonial evidence in a preliminary response: “On the one hand, you want to unload all evidence before institution because it’s the best chance of not getting instituted, but on the other hand, you reveal your entire case — experts and the other side know exactly what you’ll be arguing and be prepared in the deposition,” said Mike. “That’s the balancing act with this.”
The full article, “IP Owners Approach USPTO Evidence Proposal With Caution,” was published by Law360 on May 29 and is available online.