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.