Starting May 2, 2016, patent owners may choose to include “new testimonial evidence” in the preliminary response of an IPR. 81 Fed. Reg. 18,750, 18,766 (April 1, 2016) (deleting 37 C.F.R. § 42.107(c) prohibition on “new testimonial evidence”). Before this change, a petitioner could provide an expert declaration supporting its petition, but a patent owner in many circumstances could not provide its own expert declaration supporting its preliminary response and needed to rely on attorney argument. B/E Aerospace, Inc. v. Mag Aerospace Indus., LLC, Case IPR2014-01510, Paper 13 at 5 (PTAB Jan. 20, 2015). This rule change allows patent owners to include expert declarations on claim construction and validity in opposing IPR institution.

Although the rule as to a patent owner’s expert’s declaration as part of the preliminary response is changing, it remains to be seen what practical effect the rule change will have. Genuine issues of material fact are viewed “in the light most favorable to the petitioner” in deciding on institution (to be codified in 37 C.F.R. at 42.108(c)). To the extent the PTAB is presented with competing expert declarations supporting different possible claim constructions, however, the PTAB may find it useful to consider the competing declarations before deciding on a claim construction. If a genuine issue of material fact needs resolved for preliminary claim construction, the PTAB has discretion to allow limited discovery and a petitioner’s reply prior to institution. 81 Fed. Reg. 18,750, 18,756–57 (Responses to Comments 2 and 5).

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