Eugene Goryunov in Law360: IP Owners Approach USPTO Evidence Proposal With Caution

06/02/2020

Haynes and Boone, LLP Partner Eugene Goryunov talked with Law360 about a U.S. Patent and Trademark Office (USPTO) proposal to get America Invents Act challenges thrown out early.

Here is an excerpt:

The USPTO's proposal would stop giving patent challengers the benefit of the doubt when expert testimony submitted by the owner contradicts the petition. If it becomes law, attorneys say patent owners would be given more power to fight petitions at the Patent Trial and Appeal Board, but they have to be prepared for potentially devastating blowback if the challenge does get instituted.

Haynes and Boone, LLP Partner Eugene Goryunov said he's curious whether these declarations will affect the PTAB's discretionary denial analyses as well.

For example, the newly precedential Apple Inc. v. Fintiv Inc. decision tells the PTAB to take into account how much merit the petition has when deciding whether the board can use its discretion to deny a challenge. Patent owners could theoretically use this testimonial evidence to prove the petition's lack of merit, especially if the petitioner isn't given the presumption, Goryunov said.

The notice of proposed rulemaking was published on May 27, and comments will be allowed for 30 days.

"The devil is in the details, and we don't know what the final rule is going to look like, so it would be fascinating to see the comments the Patent Office receives," Goryunov said.

To read the full article, click here.

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