Law360, New York (February 17, 2015, 10:17 AM EST) -- A patent owner may file a preliminary response to a petition for an inter partes review or a covered business method patent review, explaining therein why the Patent Trial and Appeal Board should not institute a patent review.[1] Under 37 C.F.R. § 42.107(c) and § 42.207(c), the preliminary response "shall not present new testimony evidence beyond that already of record, except as authorized by the Board."[2] If a patent owner's preliminary response relies on evidence that does not comply with this rule, the PTAB will likely expunge the evidence from the record, which could severely weaken the preliminary response. If a petitioner fails to properly examine a patent owner's preliminary response and accompanying exhibits for new testimony evidence, they may overlook such evidence and risk the board's consideration of that evidence in the patent owner's favor. As the preliminary response is a patent owner's only shot at preventing the institution of an IPR or CBM review, patent owners and petitioners alike should take note of how the PTAB interprets and enforces the "no new testimony evidence" rule....