In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) the PTAB denied institution of an Inter Partes Review under 35 USC § 314.  This denial was based on several factors including the declaration of the petitioner’s expert Dr. Jones.  The PTAB noted that Dr. Jones’ declaration “merely repeats, verbatim, the conclusory assertion for which it is offered to support.”  This finding was in response to Dr. Jones declaring that “[a] POSITA would understand that such a blocking would require recording the blocking in a data record associated with that user’s account” without citing to any additional supporting evidence or provide any technical reasoning to support his statement.  Thus, according to the PTAB, the cited declaration testimony was deemed to be conclusory and unsupported, adding little to the conclusory assertion for which it was offered to support, and was entitled to little weight.  The PTAB also noted similar deficiencies with regard to another argument of the petitioner and its support by Dr. Jones.

The panel stated that it is problematic when expert testimony is offered not simply to provide a motivation to combine prior-art teachings, but rather to supply a limitation missing from the prior art.  Referencing: KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that a “factfinder . . . must be cautious of arguments reliant upon ex post reasoning”); Arendi S.A.R.L. v. Apply, Inc., 832 F.3d 1355, 1361–62 (Fed. Cir. 2016) (holding that reliance on common sense in an obviousness analysis is “typically invoked to provide a known motivation to combine, not to supply a missing claim limitation”).  Although doing so might be permissible according to the panel when “the limitation in question [is] unusually simple and the technology particularly straightforward”, the PTAB determined that Petitioner had not alleged that to be the case nor had it provided support for such an allegation.