Takeaway: The Board has discretion in how much weight to afford expert testimony, and a Board’s determination that expert testimony regarding obviousness rationales is conclusory and unsupported may be difficult to address in a request for rehearing.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of inter partes review of the ’462 patent. Petitioner asserted six grounds of unpatentability under Sections 102 and 103 in its Petition, and the Board denied each one.
The Board stated that decisions on institution are reviewed for an abuse of discretion, which occurs when “a decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” In addition, a request “must identify, specifically, all matters the party believes the Board misapprehended or overlooked.”
In its Request for Rehearing regarding a first ground of anticipation and related obviousness grounds, Petitioner argued that the Board’s analysis was erroneous, requiring that the prior art disclose more than the claims required. Petitioner also argued that the cited prior art disclosed such features in any case. The Board stated that Petitioner had misunderstood its analysis and repeated that it was not persuaded that Petitioner had established that the prior art disclosed a particular claim limitation. The Board also held that Petitioner could not argue for the first time in its Request for Rehearing that the feature was disclosed in the prior art.
With respect to the second ground of anticipation, Petitioner argued that the Board abused its discretion in denying institution. The Board was not persuaded that it abused its discretion, finding once again that the Petition did not provide a sufficient explanation why the prior art disclosed certain features. Petitioner provided additional arguments highlighting the significance of the evidence it presented in the Petition. However, the Board found these to be impermissible new arguments, which will not be considered in a request for rehearing. And even if such arguments were considered, the Board found that such arguments were inconsistent with the Petition and based on attorney argument lacking in evidentiary support.
Finally, Petitioner argued that the Board fatally erred in denying institution of an obviousness ground of unpatentability by not giving sufficient weight to its expert’s declaration. In particular, Petitioner argued that Federal Circuit case law, Meyer I.P. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1374-76 (Fed. Cir. 2012), compelled the Board to accept its expert’s opinion regarding the “simple-substitution and obvious-to-try rationales” of obviousness because its declaration was at least as detailed as the one found sufficient in Meyer. The Board disagreed, stating that Meyer concerned compliance with Rule 26(a) of the Federal Rules of Civil Procedure and did “not restrict the Board’s well-established discretion to give little weight to conclusory, unsupported expert testimony.” Thus, the Board denied Petitioner’s rehearing request, finding again that the expert testimony was conclusory and that it failed to “explain why the alleged combination would have been a simple substitution achieving predictable results, or why selecting Bottesch’s array, as opposed to any other, would have been a choice from a finite number of solutions with a reasonable expectation of success.”
TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00258
Paper 18: Decision on Petitioner’s Request for Rehearing
Dated: August 27, 2014
Patent: 7,994,462 B2
Before: Justin T. Arbes, Benjamin D.M. Wood, and Neil T. Powell
Written by: Wood