Rather than resist preliminary-stage discovery, Petitioners instead should say “Bring it on!”
As I suggested in an earlier post, Patent Owners’ ability to introduce new declaration evidence with a preliminary response is unlikely to help them avoid trial. I doubt the Board will deny a Petitioner the relief requested on the untested evidence of a Patent Owner witness, however persuasive that evidence may appear. The new PTAB rules bear me out by making clear that factual disputes at institution will be resolved in favor of the Petitioner. I proposed that Patent Owners instead should seek permission from the Board to conduct a focused deposition of a key Petitioner witness during the preliminary stage. I think the Board would be willing to deny the Petitioner trial in the face of a key concession on a dispositive issue in deposition, because the parties will have had a full and fair opportunity to test the evidence in question.
One reasonably can expect strenuous opposition by Petitioners to anything that improves the Patent Owner’s chances of avoiding a PTAB trial. For one thing, many IPR’s are brought for the purpose of obtaining a stay of related litigation. An institution that leads to a stay is of some, perhaps transient, value for a Petitioner–Defendant, even one that ultimately loses at the PTAB.
But I think Petitioners should embrace preliminary depositions. A resilient witness presents an extra opportunity to bolster the Petitioner’s case. And if the Petitioner is going to lose, it’s better to lose early. It might be a little humiliating, but it avoids the cost of the PTAB trial. More importantly, it avoids the estoppel that attaches upon entry of a final written decision pursuant to 35 U.S.C. §§ 315(e) and 325(e). No estoppel (at least no de jure estoppel) attaches after an institution denial. The Petitioner can learn from its mistake in the first petition and try again, or at least fine-tune its litigation invalidity defense. But once the PTAB enters an unfavorable final decision, the Petitioner is prevented by statute from pursuing the challenges that it “raised or reasonably could have raised” during the PTAB proceeding. That’s a harsh penalty any Petitioner should be happy to avoid. So better to face up to petition weaknesses early on and live to fight another day.