As follow up to last month’s article on lack of motivation to combine, another just released Board decision in IPR2016-00972 (Paper 18) again found for patent owner because the petition failed to provide a proper motivation to combine. Here, the Board directed their analysis to the expert declaration and deposition. The Board, relying on ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012), held that the petition’s expert declaration lacked how the references would actual be combined and work together – rather it merely stated they both taught aspects of the claims (Pap. 18, 14-18). And the Board held that the petitioner’s expert’s deposition testimony demonstrated the complexity of the choices a POSA would need to make before being able to make the combination, which was also discussed by patent owner’s expert. (Id. 14-20).

In the end, the Board held “[t]o paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the ‘faster than’ limitation recited in claims 1 and 24 by instead repeating that ‘model[ing], simulat[ion], and test[ing]’ leads to a reasonable expectation of success (Pet. 34); whereas, in this proceeding, the number of permutations and variables are ‘unlimited’ and ‘impossible’ to address, as acknowledged by Dr. Creusere [at deposition] (Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3). That is, Petitioner attempts to craft a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements.” (Id. 18-19.) “Accordingly, we find that Petitioner failed to meet its burden of proof in showing: (1) how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims; which is closely related to point number (2), namely, whether a person having ordinary skill in the art on this record could have had a reasonable expectation of success in attempting to combine the teachings of Franaszek with Osterlund. (Id. 20.)

This decision demonstrates patent owners and petitioners alike need to be cognizant of which experts to hire. Words used in the declaration and an expert’s answers to questions during deposition can make or break a case, as the board is laser focused on evidence in the record and not attorney argument.

Note: In June’s PTAB Strategies and Insights Newsletter, Richard Coller and Jason Fitzsimmons will do a deep dive into deposition strategy.

This article appeared in the May 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.