U.S. Patent & Trademark Office (USPTO) Director Kathi Vidal last week designated an August 24, 2022 decision from the Patent Trial and Appeal Board (PTAB) as precedential. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9. The designation is significant for patent owners as it standardizes analysis of petitioner expert declarations and will force petitioners to take more care when seeking review.
Since the inception of inter partes review, a bane on patent owners has been petitioners submitting conclusory expert declarations. Such declarations essentially place a stamp of legitimacy on otherwise unsupported attorney argument via the signature of an expert. A hallmark of this practice is what the PTAB found in Xerox – the only evidence cited in the petition for a particular argument is the expert declaration, which “merely repeats, verbatim, the conclusory assertion for which it is offered to support…. [the expert] does not cite to any additional supporting evidence or provide any technical reasoning to support his statement.” Director Vidal’s decision denying rehearing similarly explained that the “declaration sets forth Petitioner’s conclusory assertions as though they are facts, rather than setting forth facts and evidence in support of Petitioner’s assertions.” Click the following links to access a copy of the subject petition and the declaration.
37 C.F.R. § 42.65 generally cautions that “expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” However, PTAB panels have inconsistently applied the rule in these circumstances – in some cases the panel would reject the testimony, in others the panel would institute a proceeding to further develop the record.
With the Xerox decision now made precedential, there is specific guidance for the PTAB that should lead to greater uniformity and a change in petitioner tactics. Petitioners should make sure their experts explain their conclusions thoroughly and with proper supporting evidence when available, rather than submitting declarations that simply “bless” perfunctory arguments. Hopefully this approach will ensure higher quality proceedings and increase fairness to patent owners.