BREAKING: PTAB Publishes Final Rule Package, PTAB Litigation Blog

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On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide.  The one substantive change of note is the removal to deference to the Petitioner’s Expert’s declaration at the Institution Decision, where current 37 C.F.R. § 42.108(c) is adjusted from:

The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but 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.


The Board’s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.

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