Director Review Spotlight: Expert Testimony

Director Vidal has issued two Director Review decisions related to the evaluation of expert testimony in Patent Trial and Appeal Board (PTAB) proceedings. In the first decision, Director Vidal held that the Board was correct to give little weight to an expert’s opinion because the expert’s declaration offered only conclusory assertions, repeating verbatim the attorney arguments. In the second decision, Director Vidal faulted the Board for disregarding expert testimony of what a drawing in a patent reference “clearly shows” and how that drawing would be understood to meet dimensions recited in the claims.

Below, we offer a summary of each decision.

Xerox Corp. et al v. Bytemark, Inc., IPR2022-00624 (PTAB February 10, 2023)

In IPR2022-00624, various petitioners, including Xerox Corp. (“Xerox”), challenged claims of a patent owned by Bytemark, Inc. (“Bytemark”). In support of its argument that prior art rendered the patent claims invalid, Xerox offered an expert declaration. The Board found that the expert declaration was the only evidence supporting the petitioner’s conclusory assertion that key limitations were obvious. In denying institution, the Board gave little weight to the declaration because it contained verbatim restatements of the petition’s conclusory assertions.

The Director affirmed the Board’s decision. The Director found that the Board correctly gave little weight to the expert’s opinion because it did not provide “any technical detail, explanation, or statements supporting why the expert determine[d] that the feature in question was required or would have been obvious based on the prior art disclosure.” Because the expert declaration “merely offered conclusory assertions without underlying factual support and repeated, verbatim, the petitioner’s conclusory arguments,” the Director found the expert’s declaration entitled to little weight in accordance with 37 C.F.R. § 42.65(a).

MAHLE Behr Charleston Inc., v. Frank Amidio Catalano, IPR2023-00861 (PTAB April 5, 2024)

MAHLE Behr Charleston Inc. (“Petitioner”) filed a petition challenging claims in a patent owned by Frank Amidio Catalano (“Patent Owner”). In its petition, the petitioner relied in part upon a drawing in a prior art patent and expert testimony regarding the same as disclosing or rendering obvious a claim limitation reciting that an element (“element 1”) is “within 10 inches” of another element (“element 2”). Although the drawing did not provide exact dimensions, the petitioner’s expert opined that the drawing depicted element 1 being located “at” element 2 and therefore would “necessarily” be “within 10 inches” of element 2 (as required by the relevant claim).

The Board’s decision denying institution was based in part on the petitioner’s alleged failure to demonstrate the above-referenced claim limitation. In particular, the Board’s decision was premised on the Federal Circuit’s decision in Hockerson-Halberstadt, Inc. v. Avia Group International, Inc., 222 F.3d 951 (Fed. Cir. 2000), which stated in relevant part that “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” The Board thus concluded that the figure in the patent reference at issue could not be relied upon to teach the “within 10 inches” limitation of the challenged claims.

The Director vacated the Board’s denial of institution and remanded the case to the Board. The Director found that the Board had failed to consider the petitioner’s arguments regarding the prior art being “clear on its face” with respect to the dimensions at issue and expert testimony that was premised on the features described in the patent drawing. In particular, the Board noted that, “because the relevant expert testimony relies on features of the drawing itself, it was not insufficient for lacking ‘additional supporting evidence or… technical reasoning to support [the expert’s] statement.’” The Directed thus concluded that the Board should have evaluated this argument and considered the expert’s testimony in reaching its decision.

On remand, the Director instructed the Board to evaluate the petition's arguments and the underlying expert testimony in assessing whether the figure in the prior art patent “is clear on its face” or “would have reasonably suggested the placement of” the two elements “within 10 inches” of each other.