Partner Joseph Meara was quoted in the Law360 article, “IP Owners Approach USPTO Evidence Proposal With Caution,” about how patent owners may be able to harness a recent rule proposed by the U.S. Patent and Trademark Office to get America Invents Act challenges thrown out early. But the rule change could hurt patentees in the long run.
The USPTO's proposal would stop giving patent challengers the benefit of the doubt when expert testimony submitted by the owner contradicts the petition. If it becomes law, attorneys say patent owners would be given more power to fight petitions at the Patent Trial and Appeal Board, but they have to be prepared for potentially devastating blowback if the challenge does get instituted.
The issue at hand is which party the PTAB should believe when testimonial evidence submitted with a patent owner's preliminary response creates a genuine issue of material fact. Since 2016, the board has presumed the petitioner is in the right, at least when deciding whether to institute review. The USPTO now wants the board to view the testimonial evidence along with the totality of the evidence. Many attorneys believe this is part of a larger trend of USPTO Director Andrei Iancu trying to be more friendly toward patent owners, such as by allowing more discretionary denials of petitions, attempting to make amending patents easier and narrowing the claim construction standard.
"The standards have been tightening on petitioners," said Meara. "One could view this as just one more small change seeking to either balance the playing field or tilting it away from the petitioner, depending on your point of view."
The USPTO tied this presumption concern to proceedings in Hulu LLC v. Sound View Innovations LLC, where the Precedential Opinion Panel held that in order for printed publications like textbooks to be used to challenge patents, the challenger must present specific evidence that the publication was available to the public.
"What Hulu did is make the Patent Office realize there were some ramifications here that they hadn't really considered," Meara said. "They got arguments in Hulu that this presumption not only means petitioners should be favored [over whether something is a printed publication], but more generally, the presumption meant that institution should be favored. [The POP] tried to nail that into the ground so to speak, and basically said there's no presumption for institution."