PTAB Denial of IPR Petition Due to Conclusory Statements of Declarant Designated Precedential

“This is particularly problematic in cases where, like here, expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art,” wrote the Board.

On Friday, February 10, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal designated as precedential an August 2022 decision of the Patent Trial and Appeal Board (PTAB) denying an inter partes review (IPR) petition due to the “conclusory statements” of the petitioner’s declarant.

The PTAB held in IPR2022-00624 that Xerox Corp., et. al. failed to show that there was a reasonable likelihood it would prevail in proving unpatentability of the challenged claims of Bytemark, Inc.’s U.S. Patent No. 10,360,567 B2. The patent is titled, “Method and System for Distributing Electronic Tickets with Data Integrity Checking.”

The Board found that the petitioner’s only evidence to support its arguments that the relevant prior art renders the patent claims obvious was the opinion of its Declarant, Dr. Jones, which “merely repeats, verbatim, the conclusory assertion for which it is offered to support.”

Jones’ statement read ““[a] POSITA would understand that such a blocking would require recording the blocking in a data record associated with that user’s account.” Citing to 37 C.F.R. § 42.65(a), the PTAB noted that “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” And citing Upjohn Co. v. Mova Pharm. Corp., the Board noted that “[l]ack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.”

The Declarant did not cite to any additional supporting evidence or provide technical reasoning, including failing to offer a construction for key terms. “This is particularly problematic in cases where, like here, expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art,” wrote the Board.

In January, Vidal also designated as precedential her December 2022 Director Review decision in Apple v. Zipit vacating the PTAB’s Adverse Judgments in four instituted inter partes reviews (IPRs) brought by Apple. Vidal’s decision had to do with the standard for abandonment of contest, which Vidal found had not been met based on the patent owner’s comment in the proceedings. The PTAB entered adverse judgments in all four IPRs at issue and determined that the patent owner had abandoned the contest but Vidal, on sua sponte review, said “I do not understand counsel’s statements to have been an unequivocal abandonment of the contest of these proceedings,” and that the comment was instead contingent “on the Board determining that Petitioner met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.”

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Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at […see more]

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