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Expert Testimony Has Little Impact on AIA Review

Nearly one year has gone by since the new rules permitting patent owners to offer expert testimony in their responses to American Invents Act (AIA) review petitions have passed.  With the prior rules, petitioners were able to present expert testimony in their petition for review, but patent owners were not allowed to do the same.  Following complaints from patent owners, the USPTO passed the new rules permitting patent owners to offer expert testimony alongside their preliminary responses.

However, the new rules appear to have minimal effect on the result of the Patent Trial and Appeal Board determinations about whether to conduct reviews.  The statistics from RPX Corp. demonstrate that the PTAB has conducted reviews of challenged claims at virtually an identical rate in cases regardless of whether patents owners choose to include expert testimony along with their responses.  Regarding cases in which expert testimony was submitted alongside the response, review of the challenged claims occurred approximately 50 percent of the time.  Yet, review of some claims occurred in 13 percent of these cases.  With cases in which the patent owner did not submit expert testimony along with the initial response, review of challenged claims occurred 50 percent of the time, while review of some claims followed in 12 percent of these cases.

Because these rules are fairly new to patent owners, it is likely that they are still attempting to figure out how to use expert testimony to their advantage.  However, attorneys have said that patent owners can find holes in the petitioner’s case and then utilize expert testimony to elucidate the gap.

Considering that the changes are fairly new, we still have yet to see the effect of expert testimony on the overall outcome.

For more information, see Law360.

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