Petitioners Should Prefer To Lose Early

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.