Akin Gump IP Lawyers Pen Law360 Article on Effect of New Testimonial Evidence on Inter Partes Reviews

Law360 has published “How New Testimonial Evidence Affects IPR Institution,” an article written by Akin Gump intellectual property partner Rubén Muñoz and counsel Melissa Gibson and Matthew Hartman looking at the impact of inter partes review (IPR) proceedings involving patents in the biotechnology and chemical arts to assess the prevalence and value of new testimonial evidence (NTE).

The authors write that it has been nearly two years since a new rule took effect permitting patent owners to submit NTE in support of a preliminary response to an IPR petition. After analyzing more than 300 proceedings that have taken place during that time, the article reports that the submission of NTE did not reduce overall institution rates.

Muñoz, Gibson and Hartman offer several reasons to account for the overall lack of impact of NTE on institution rates. They also highlight factors for patent owners to consider when deciding whether or not to submit NTE with a preliminary response.

The article concludes by observing that patent owners “have not blindly embraced the use of NTE to support their preliminary responses.” Further, “the decision of whether or not to use NTE in support of a preliminary response involves consideration of multiple factors and may not necessarily be focused solely on preventing institution.” Instead, the authors say, it may involve “other overarching considerations such as the potential for early settlement.”

To read the full article, please click here.