The PTAB has again shown that, unless there is a solid demonstration of good cause, it will not allow much wiggle room in the implementation of the Inter Partes Review Trial Practice Rules. This time, in IPR2012-00035 (Nissan North America v. Collins), the patent owner sought authorization to introduce testimony with its Preliminary Patent Owner Response, despite the fact that 37 CFR §42.107(c) states that no new testimonial evidence is allowed in such a preliminary response to the petition.
[pullquote align=”left|center|right” textalign=”left|center|right” width=”30%”]37 CFR §42.107(c) – (c) No new testimonial evidence. The preliminary response shall not present new testimony evidence beyond that already of record, except as authorized by the board.[/pullquote]
The Trial Practice Guide further explains the circumstances under which new testimony may be presented in a preliminary response: “The preliminary response may present evidence other than new testimonial evidence to demonstrate that no review should be instituted. §§ 42.107(c) and 42.207(c). New testimonial evidence may be permitted where a party demonstrates that such evidence is in the interests of justice. For example, the Board may permit new testimonial evidence where it addresses issues relating to the petitioner’s standing, or where the Board determines that consideration of the identified evidence is necessary in the interests of justice as the evidence demonstrates that the trial may not be instituted.” Trial Practice Guide at 48764.
In Nissan, the patent owner, Collins, stated that permitting new testimonial evidence was in the interests of justice because the testimony it intended to offer would refute the patent challenger’s witness’ testimony as to how one of skill in the art would view the prior art. This was deemed an insufficient basis by the Board “to veer from the ordinary course of the proceeding.” Order at 4.
As has been its practice in early Orders, however, the PTAB did provide some guidance on what may be sufficient to satisfy the “interests of justice” in the future. In this regard, if the new testimony were directed to an issue of standing (i.e., whether the petition was properly filed), as the Trial Practice Guide suggests, new testimony may have been allowed. Evidence that is directed merely to the credibility of a witness is not sufficient to overcome the rule prohibiting new testimonial evidence. While the patent owner could rely upon other evidence to attack the witness’ credibility, “new testimonial evidence in this context is best considered if and when a trial is instituted.” Order at 4.