NYIPLA Comments to PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence

On June 26th, 2020, the New York Intellectual Property Association (“NYIPLA") submitted Comments in response to “Proposed Rule: PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence,” Federal Register Notice, May 27, 2020, Vol. 85, No. 102 (Docket No. PTO-P-2019-0024).  In the submission, the NYIPLA endorsed the adoption of the USPTO's proposed revisions to Rules 42.108(a) and 42.208(a).  Specifically, in the proposed revisions, the USPTO sought to codify the prior implementation of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) and the PTAB’s April 26, 2018 Guidance on the impacts of the SAS on AIA trial proceedings (“PTAB Guidance”) through APA notice-and-comment rulemaking.  Next, in proposed revisions to Rules 42.108(c) and 42.208(c), the USPTO sought to eliminate the PTAB’s current presumption in favor of the Petitioner for a genuine issue of material fact created by testimonial evidence submitted with a Patent Owner’s preliminary response when deciding whether to institute an IPR or PGR proceedings.  With respect to these revisions, the NYIPLA took the neutral and most equitable position that neither party should receive the presumption when there is genuine issue of material fact created by testimonial evidence submitted with a Patent Owner’s preliminary response.  Instead, the PTAB should weigh all evidence in its discretion in determining whether to institute an IPR or PGR.

Special thanks to the PTAB Committee in collaboration with the Patent Litigation and Legislative Action Committees for preparing  the comments. 

Click HERE to read the full comments.