Petitioners and patent owners may submit expert testimony to support the arguments and evidence presented with their pleadings. 37 C.F.R. § 42.65(a) provides that expert testimony which does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.
SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226, Paper 38 (PTAB Aug. 6, 2014). In the case of conflicting evidence, expert declaration testimony is not persuasive if it is not supported by objective evidence.
Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00583, Paper 50 (PTAB Sept. 9, 2015). The Board was not persuaded by the testimony of petitioner and patent owner’s respective experts on claim construction. The Board determined that the expert declaration testimony submitted by both parties does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel and will therefore be accorded little or no weight.
Caterpillar, Inc. v. Esco Corp., IPR2015-01032, Paper 12 (PTAB Oct. 15, 2015). Whether expert testimony discloses the underlying facts or data upon which the expert’s opinion is based, under 37 C.F.R. § 42.65(a), relates to the weight to be afforded that evidence, and not the admissibility of that evidence. Patent owner objected to the declaration testimony of petitioner’s expert, arguing that the declaration fails to disclose the facts or data upon which the testimony is based and bears such a resemblance to the petition that the petition does not represent the declarant’s own work. The Board declined to exclude the expert’s testimony in the institution decision. The Board noted that, after institution, patent owner has ten days to object to the evidence. Upon receiving an objection, petitioner may serve supplemental evidence attempting to address the objection. 37 C.F.R. § 42.64(b)(2).
Johns Manville Corp. v. Knauf Insulation Inc., IPR2015-01633, Paper 10 (PTAB Jan. 4, 2016). The Board denied institution of an anticipation ground on the basis that petitioner did not provide sufficient evidence to support the challenge. Petitioner argued that a reference inherently teaches the features of numerous claims based on experiments supervised by petitioner’s expert. However, the Board indicated petitioner did not provide any prior art or other literature to support the expert’s opinion on inherency. Therefore, the expert testimony is entitled to little or no weight under 37 C.F.R. § 42.65(a) because the expert’s testimony does not provide the underlying facts or data upon which the expert’s opinion is based. Petitioner argued that the Board should not doubt its expert’s opinion at the preliminary stage of institution. The Board disagreed, indicating that a lack of credible support is no justification to put patent owner to the expense of defending an IPR trial.
C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-01654, Paper 9 (PTAB Feb. 4, 2016). Expert testimony which merely repeats attorney argument without citation to the asserted prior art references or any other evidence is entitled to little, if any, weight.
Chums, Inc. v. Cablz, Inc., IPR2014-01240, Paper 43 (PTAB Feb. 8, 2016). The Board was not persuaded that the declaration testimony of petitioner’s expert was insufficient and vague based on patent owner’s assertions alone. The Board noted that patent owner elected not to depose petitioner’s expert, so the Board did not have any further testimony to elucidate any purported shortcomings in the expert’s declaration. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to the evidence presented.
Coalition for Affordable Drugs VII LLC v. Pozen, IPR2015-01680, Paper 18 (PTAB Feb. 11, 2016). The Board denied institution of asserted obviousness grounds on the basis that petitioner did not demonstrate persuasively why it would have been obvious to combine the compositions of several reasons. The Board was not persuaded by petitioner’s assertion of predictable results. The only evidence cited in support of this contention was the declaration testimony of petitioner’s expert. However, the Board determined that the declaration testimony on this point repeats the statements presented in the petition without citing any evidence in support of the argument. Conclusory assertions merely repeated and supported are not persuasive.
InfoBionic, Inc. v. Braemer Manufacturing, LLC, IPR2015-01704, Paper 11 (PTAB Feb. 16, 2016). Petitioner’s obviousness arguments were premised on petitioner’s characterizations of the teachings of a relied-upon reference. Other than the addition of the phrase “In my opinion,” the declaration testimony of petitioner’s expert was identical to petitioner’s arguments. The Board discounted the expert’s testimony as conclusory and gave it little or no weight. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a).
Coxcom, LLC v. Joao Control & Monitoring Sys., IPR2015-01765, Paper 8 (PTAB Feb. 19, 2016). In denying institution, the Board was not persuaded by the declaration testimony of petitioner’s expert when addressing patent owner’s arguments. For each section of the reference that patent owner argued against, the Board found that the expert’s testimony relied on conclusory statements. The Board therefore gave the expert’s testimony little to no weight.
Zimmer Biomet Holdings, Inc. v. Four Mile Bay, LLC, IPR2016-00011, Paper 8 (PTAB Apr. 1, 2016). The Board denied institution, in part, because the declaration testimony of petitioner’s expert was determined to be “conclusory.” The expert repeated the claim language and provided citations to particular portions of the reference. However, the Board asserted that the testimony was conclusory because the expert purportedly did not elucidate how the features of the asserted reference corresponded to the positional relationship required by the claims (“the distal end surface of the neck body”).
Micron Tech., Inc. v. Elm 3DS Innovations, LLC, IPR2016-00703, Paper 12 (PTAB Sept. 6, 2016). The Board denied institution, in part, because the obviousness arguments in the petition were not supported with “further explanation or analysis.” While the petition quoted an expert declaration for support, the Board indicated that the expert’s testimony “merely states, without providing further analysis or evidence, that one of ordinary skill in the art” would have recognized petitioner’s obviousness contention. The Board emphasized that because the expert’s testimony did “not disclose the facts underlying his conclusions or provide sufficient analysis or evidence to support his conclusion,” the expert’s testimony is entitled to little or no weight pursuant to 37 C.F.R. § 42.65(a).