Revised Dec. 9, 2020, PTAB Trial Rules Eliminate the Presumption in Favor of Petitioner at Institution

On December 9, 2020, the USPTO released revised rules for AIA trials, which implemented the following four changes:

These modified rules will apply to all petitions filed on or after January 9, 2021.  Largely, these rule changes codify the current practices of the Board, such as the Board policy after the Supreme Court’s April 2018 decision in SAS v. Iancu to institute on all grounds and all claims when granting institution.  Further, the rule changes codify the guidance in the Trial Practice Guide providing for sur-reply briefs. 

Unlike most of these rule modifications that comport with current Board practice, however, the change to eliminate the presumption in favor of Petitioner is contrary to current rules.  The current rules provided that “a genuine issue of material fact created by [Patent Owner] 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.”  37 C.F.R. §§ 42.108, 42.208.  Accordingly, the new rule change eliminating this presumption may impact whether Patent Owners decide to provide testimony prior to institution.