Some of the best inter partes review lessons can be learned from decisions denying institution of an inter partes review trial. Among the chief grounds for denying petitions, failure to provide competent expert testimony in support of a petition, presented itself again in Panasonic Corp., et al. v. Optical Devices, LLC, IPR2014-00302, Paper 9.
In Panasonic, Petitioner asserted two anticipation grounds of unpatentability, relying on two separate references. In support of the anticipation arguments, the Board found that Petitioner improperly picked and chose from various descriptions of each respective reference to allegedly disclose all limitations of the challenged claims, rather than pointing to a single anticipatory embodiment. The impropriety of this course of action was discussed previously.
Of particular interest in this case was the Board’s treatment of declaration testimony presented by Petitioner. More specifically, Petitioner’s expert’s declaration simply stated that each of the two allegedly-anticipatory references disclosed all required limitations, including inherently disclosing a critical limitation. The declaration testimony provided little detail or support, however, beyond the bare statements of anticipation. Accordingly, the declaration testimony was judged by the Board to be conclusory, particularly with respect to the inherent disclosure element. As such, the Board gave the testimony little weight.
In view of the weak anticipation arguments and conclusory declaration testimony, Patent Challenger failed in getting any challenged claims in to an IPR trial.
Monsanto had two petitions for inter partes review denied when the Board determined that a supporting expert declaration was entitled to little weight. Monsanto was challenging two Pioneer Hi-Bred patents in cases styled as Monsanto Co. v. Pioneer Hi-Bred Int’l, Inc. (IPR2013-00022 and IPR2013-00023) involving US Patent Nos. 5,518,989 and 6,162,974. The Board denied all challenge grounds for both patents.
The ‘989 and ‘974 patents describe a method of enhancing the quality of maize seed. In particular, the method involves defoliating maize plants after pollination. Generally, the patents describe defoliating the plant at between 600 and 850 growing degree days after pollination. The challenged claims require both defoliating within a specified growing degree day time frame and obtaining enhanced seed vigor.
Patent Challenger relied upon an expert declaration to establish that the prior art references teach and/or provide a reason to defoliate maize plants withing the claimed 600 to 850 growing degree day time frame. Patent Owner disagreed with the expert’s conclusions and contended that the declaration was entitled to little weight, because the expert “withheld data and calculations that underlie his opinions.” The Board agreed that the declaration was entitled to little weight, citing 37 C.F.R. Sec 42.65(a): Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Order at 7-8.
The Board found that the declaration failed to provide sufficient underlying data such that one of ordinary skill in the art would have a reasonable basis to believe that his growing degree day calculations and conclusions are correct. Absent the expert declaration, Patent Challenger failed to identify sufficient credible evidence to establish that the prior art meets the growing degree day limitation of the claims, because the prior art references do not discuss the number of growing degree days between pollination and defoliation.
The Board also rejected Patent Challenger’s inherency argument — that enhanced seed vigor is obtained from the prior art defoliation techniques. Patent Challenger again was relying on the expert declaration for this argument, but the Board found that the declaration did not provide a sufficient or credible explanation as to why the ordinary artisan would have expected enhanced seed vigor. This was especially so in light of the fact that the patents-at-issue taught the opposite.
In the end, Patent Challenger did not provide evidence of how the prior art references taught the claim limitations beyond the expert declaration and that declaration was fatally flawed. Once the Board found that there was insufficient underlying data to believe the calculations and conclusions of the expert declaration, Patent Challenger’s case was lost and the Board denied the petitions.