As of May 2, the Patent Trial and Appeal Board rules of practice have been amended to allow patent owners to submit testimonial evidence with a preliminary response and to provide that a ''genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.''1 This article explores how PTAB panels have addressed pre-institution factual disputes and the potential impact of the PTAB's recent rule changes. In particular, three areas are considered: (1) disputes about the substance of what a prior art reference discloses; (2) disputes about whether a reference qualifies as prior art; and (3) disputes about whether a petition is barred based on actions of a privy or real party-in-interest of the petitioner.
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Originally published by BNA's Patent, Trademark & Copyright Journal, 6/17/16
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