The PTAB Is Unimpressed by Unsupported Attorney Argument

by McDermott Will & Emery

BAE Systems Info. and Electronic Sys. Integration, Inc. v. Cheetah Omni, LLC

In a final written decision, the Patent Trial and Appeal Board (PTAB) found several claims of the patent at issue unpatentable as anticipated and obvious.  The PTAB denied the patent owner’s motion to amend claims based on the patent owner’s failure to support its arguments with testimonial evidence. BAE Systems Info. and Electronic Sys. Integration, Inc. v. Cheetah Omni, LLC, Case IPR2013-00175 (PTAB, June 19, 2014) (Elluru, APJ).

BAE petitioned the PTAB for review of a patent directed to systems and methods for generating infrared (IR) light for use in medical procedures.  Certain embodiments of the patent utilized “a Raman wavelength shifter that is coupled to a pump laser to produce a longer wavelength.”

During claim construction, the only term disputed by the parties was “gain fiber.” The patent owner argued that the construction at institution was too narrow and that a patentee is entitled to act as its own lexicographer. As such, the patent owner argued for a claim construction “broad enough to include the teachings in the specification and the understanding of a person of ordinary skill in the art as attested by [petitioner] BAE.”

In response, the petitioner argued that the patentee’s proposed construction would render the term “gain” superfluous because the construction “does not require amplification of the input signal.” The Board agreed with the petitioner that the patent owner’s construction would read out the term “gain,” though it did slightly alter its construction.

The Board agreed with the petitioner that the claims were unpatentable, noting that the patent owner had relied exclusively on attorney argument to rebut the petitioner’s anticipation and obviousness evidence. By contrast, the petitioner presented substantial expert testimony to support its arguments and was thus able to persuade the Board of its position by a preponderance of the evidence.

The Board next turned to the patent owner’s motion to amend claims found unpatentable. The Board denied the patent owner’s motion, finding that (the patent owner had provided support in the specification only for its added limitations and did “not identify support in the original disclosure ‘for each claim’ in its motion to amend . . . as required by Rule 42.121(b)(1);” and had not shown that its proposed substitute claims were patentable.  The Board explained that a patent owner cannot make its case in an expert declaration and then simply refer in the motion, to the presentation in the declaration. That is, “[i]t is improper for any argument to be fully developed and presented, not in the party’s paper itself, but in the declaration of an expert.”

Practice Note:  Attorney argument and expert declarations are not sufficient to prevail at the PTAB. Success at the PTAB depends on testimonial evidence and support found in original disclosures.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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