New Testimonial Evidence with Preliminary Responses: Panacea or Placebo?

Just over three years ago, during a keynote speech at the AIPLA annual meeting, the Patent Trial and Appeal Board (PTAB) was criticized as a patent “death squad” by then Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit. At this year’s AIPLA meeting, new PTAB Chief Judge David P. Ruschke was still defending against that impression. Chief Judge Ruschke highlighted—as he has repeatedly throughout his short tenure—a rule change that went into effect on May 2, 2016, shortly before his appointment. The rule allows patent owners to submit new expert testimony with their preliminary responses. Previously, only the petitioner could present testimony that was new (i.e., created for the proceeding) in the petition stage. Patent owners expressed concern that this asymmetry favored petitioners. As Chief Judge Ruschke has explained, the change was “certainly in response to what the stakeholders were asking for.”