USPTO Director Designates Precedential Decision on Conclusory Expert Declarations

Director of the US Patent and Trademark Office (USPTO) Kathi Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB) rejecting the petitioner’s invalidity challenge, since it was based entirely on a conclusory expert witness declaration.

Specifically, Director Vidal designated as precedential[1] the PTAB’s decision in IPR2022-00624[2], which discusses affording little weight to an expert declaration that “merely repeats, verbatim, the conclusory assertion for which it is offered to support” without further evidence, when the declaration is relied upon for finding that a prior art reference contains a missing claim limitation.[3]

The patent at issue, US Patent Number 10,360,567, is for a ticketing system that identifies and blocks users engaged in fraudulent behavior. The patent owner brought suit against the petitioner in 2017 in the US District Court for the Southern District of New York for patent infringement. The petitioner challenged the validity of claims 1–16 before the PTAB.

A key aspect of the petitioner’s challenge relied on the observation that it would be obvious to a person of ordinary skill in the art (POSITA) “that blocking the account of [a purchase of a ticket] from further use of the system would include storing a data value indicating the fraudulent activity in a data record associated with the user account.”[4] That is, the petitioner alleged the claim was obvious based on the particular claim element being inherently taught in the prior art reference. The petitioner asserted not only that (1) blocking as described in the prior art reference would “require” recording the blocking in a data record associated with the user’s account, but also that (2) a POSITA would find it obvious that “blocking the account of the purchaser” would include “storing a data value indicating the fraudulent activity in a data record associated with the user account.”[5] The petitioner relied on an opinion of its expert declarant, which was not founded on any additional reference or corroborating evidence, for both of their arguments.

EXPERT TESTIMONY MERELY REPEATING PETITIONER’S ASSERTIONS ‘ENTITLED TO LITTLE WEIGHT’ AS SOLE DEVICE IN OBVIOUSNESS ASSERTION

The PTAB disagreed with the petitioner and noted that the petitioner’s expert did not cite any additional supporting evidence or provide any technical reasoning to support his statement that blocking the account of a purchase of a ticket from further use of the system would include storing a data value indicating the fraudulent activity in a data record associated with the user account. The PTAB further observed that the petitioner’s only support for the assertion of the obviousness argument relied on the expert’s testimony and that neither the petitioner nor the expert offered any construction for the disputed claim terms “data value” or “data record.”

The PTAB observed that such circular declaratory assertions are particularly problematic in cases like this one, where “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.”[6] The PTAB rejected the petitioner’s argument that certain portions of the prior art reference describing identification and alerting of fraudulent ticket use sufficiently supported a finding that a POSITA would find it obvious that the blocking would include storing the data value indicating the fraudulent activity in a data record.[7]

CONCLUSION

In designating this decision as precedential on February 10, 2023, Director Vidal upheld that the PTAB was correct in rejecting the petitioner’s invalidity challenge, since it was based entirely on a conclusory expert witness declaration.[8] Director Vidal went on to note, “The declaration does not provide any technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.”[9]

Expert testimony is typically a critical component of PTAB proceedings, even though live expert testimony is at hearings like it is in district court litigation.[10] This decision provides a critical elaboration of the limitations on using expert testimony to fill in prior art gaps, allowing counsel to better discern when expert support in an inter partes review is more likely to be largely discounted. For example, when a declaration “copies word-for-word, petitioner’s conclusory assertions … the declaration sets forth petitioner’s conclusory assertions as though they are facts, rather than setting forth facts and evidence in support of petitioner’s assertions” and will thus likely be afforded little weight as an expert declaration.[11] As such, conclusory expert testimony without corroborating evidence, especially where that testimony is the sole basis for a finding that a missing claim limitation is taught by a prior art reference, should be afforded little weight.