Category Archives: Expert Testimony

Final Written Decision finding Asserted Reference to be Enabling IPR2014-01162

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Takeaway: A declaration that does not adequately set forth the underlying data on which the opinion is based may potentially be remedied during cross-examination or in a second declaration explaining the basis for the opinion.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-46 are unpatentable. “The ’467 patent is directed to high definition lenticular lenses.” Continue reading →

Institution Denial Finding Insufficient Evidence of Anticipation and Obviousness IPR2015-01495

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Takeaway: Picking and choosing a particular combination of possible variables disclosed in a reference is improper in the context of anticipation.

In its Decision, the Board denied institution of inter partes review of the challenged claims of the ‘612 patent. The ‘612 patent “discloses parenteral administration of iron carbohydrate complexes ‘at relatively high single unit dosages for the therapeutic treatment of a variety of iron-associated diseases, disorders, or conditions’ . . . , e.g., iron deficiency anemia, anemia of chronic disease, and dysfunctional iron metabolism.” Continue reading →

Final Written Decision Finding Some Claims Not Unpatentable For Use of Non-Analogous Art IPR2014-01079

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Takeaway: A petitioner must show that references are analogous art to be usable in an obviousness challenge by showing that the reference is either in the field of endeavor of the challenged patent or reasonably pertinent to the problem of the challenged patent such that the reference logically would have commended itself to an inventor’s attention in considering his problem.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1, 3, 6-9, 12-16, 20, and 21 of the ’949 patent are unpatentable as anticipated, but had not demonstrated that claims 2, 4, 10, 11 ,17, and 25 are unpatentable. The ’949 patent relates to “a variable movement headrest arrangement for providing support to the head of an occupant of a vehicle upon vehicle impact.” Continue reading →

Request to File Supplemental Declarations Denied IPR2015-00636; IPR2015-00637

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Takeaway: The Board will not allow a party to file supplemental evidence outside of the procedure outlined in 37 C.F.R. § 42.64.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to submit supplemental declarations. Patent Owner requested authorization to file a motion to submit two supplemental declarations, a Kretschman declaration and a Ludwick declaration.

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Denying Request for Rehearing Decision on Institution IPR2015-00943

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Takeaway: A request for rehearing of a denial of institution is denied where the Board did not overlook or misapprehend any relevant matters in making its decision.

In its Decision, the Board denied Petitioner’s request for rehearing of its denial of institution of inter partes review of the ’521 patent. Petitioner had argued that the Decision failed to apply broadest reasonable construction and misapprehended or overlooked several matters in the Petition. The Board was not persuaded by any of the arguments. Continue reading →

Expert Testimony Missing Underlying Facts or Data Receives Little Or No Weight IPR2015-01633

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Takeaway: Expert testimony that does not provide the underlying facts or data upon which the opinion is based is entitled to little or no weight under 37 C.F.R. § 42.65(a).

In its Decision, the Board denied institution of inter partes review of claims 1, 2, 4-15, 23-26, 28-31, 35-41, 50, 57, 62, 64-67, and 70-72 of the ’827 patent.

Petitioner challenged claims 1, 2, 4-15, 23-26, 28-31, 35-41, 50, 57, 62, 64-67, and 70-72 as anticipated under 35 U.S.C. § 102(b) by Gogek. Petitioner alleged that Gogek inherently teaches the subject matter of independent claim 1 based on experiments undertaken by Dr. Leed and Dr. Vickers, under the supervision of Dr. Hireskorn. Continue reading →

Authorized To Cross-Examine After Declaration Was Filed Regardless Of Service Date IPR2015-00014

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Takeaway: A party is not required to cross-examine a declarant at the time when the opposing party is first served with the declaration; rather, cross-examination can take place after supplemental evidence relating to the direct testimony has been filed.

In its Order, the Board mooted Patent Owner’s Request for Authorization to depose Petitioner’s declarant and ordered Petitioner to expunge the declarant’s testimony from the proceedings.      Continue reading →

Final Written Decision Finding Challenged Claim Not Unpatentable IPR2014-01002

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Takeaway: In an obviousness analysis, (1) to rely on inherency to establish the existence of a missing claim limitation the limitation necessarily must be present or the natural result of the combination of elements explicitly disclosed by the prior art, and (2) a party must avoid analyzing the prior art through the prism of hindsight and not imbue one of ordinary skill in the art with knowledge of the claimed invention when there is insufficient evidence of record to convey or suggest that knowledge.

In its Final Written Decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that claim 10 of the ’509 patent is unpatentable. The ’509 patent “is directed to aluminum-lithium based alloy products displaying a combination of high strength and high fracture toughness.” Inter partes review of claim 10 had been instituted on three grounds of unpatentability based on obviousness. Continue reading →