January 7, 2021

Recent amendments to the PTAB’s rules of practice in AIA trials that were published on December 9, 2020, went into effect on January 8, 2021, and will apply to all IPR and PGR petitions filed on or after that date. See 85 Fed. Reg. 79120.  One notable change is that the PTAB will no longer apply a presumption in favor of the petitioner for genuine issues of material fact created by testimonial evidence submitted with the patent owner’s preliminary response when deciding whether to institute review.  Under the new rules, the PTAB will take into account any testimonial evidence submitted with the patent owner’s preliminary response as part of the totality of evidence.  This amendment is expected to, among other things, remove any disincentive to patent owners to submit pre-institution testimony. Id. at 79122.  Further, while parties to AIA trials do not typically have a chance to depose persons providing testimony prior to institution, it has been the PTAB’s experience that cross-examination is not necessary to weigh the strengths and weaknesses of the testimony submitted for purposes of institution. Id.