Patent Owners See Proposed Rules as "Small Victory," Eppenauer Says

Shook, Hardy & Bacon Seattle Managing Partner Bart Eppenauer joins Law360's Voices of the Bar Panel to discuss proposed revisions to the America Invents Act review process that would allow expert testimony in responses. "This is good for the patent system overall," Eppenauer writes. "As to the substance of the proposed rules, patent owners may see this a small victory, but not as significant a step as many pro-patentee advocates would like."

Eppenauer acknowledges the potential usefulness of expert testimony, but "it remains to be seen how often patent owners will take advantage of this approach, particularly when there is parallel litigation where patent owners may want to avoid being locked in on various positions," he says. "Additionally, any advantages gained under this proposed rule could be offset by corresponding changes requiring that at the institution stage any disputed facts are to be viewed in the light most favorable to the petitioner, and providing the ability for petitioners to request leave to file a reply to the patent owner’s new testimony."