Declarations Are Often Limited in Scope & Content
The USPTO Director issued a precedential decision last month in Xerox Corp. v. Bytemark, Inc. that explained declarant testimony that merely repeats, verbatim, conclusory assertions of the petition (without citing additional evidence or providing technical reasoning), is to be given little weight. I didn’t find this determination to be blogworthy since this was how such testimony was being consistently treated by the Board.
What strikes me most about the decision was the need for the PTAB to have to emphasize such to the bar in the first place.
The necessity of this messaging is being driven by the fact that most PTAB declarations are of little value to the APJs. Not because they all use verbatim language (although, a lot do), but because it doesn’t seem like PTAB litigants seem to truly appreciate their value in the process.
A declaration in an AIA trial proceeding is itself direct testimony. This is a paper trial. Similarly, the later deposition of that declarant on her declaration testimony is not a discovery deposition, it is a cross-examination. A PTAB declaration is not akin to a district court expert report. There is no later testimony on the stand, this is not a preview –this is it– there can be no holding back.
Yet many attorneys, perhaps leaning on their district court experience, will restrict their declarant’s testimony to offer as little difference as possible with their attorney argument. While this practice certainly has its benefits with respect to consistency, the Board is often left with little more than a declarant agreeing with the arguments of the Petitioner/Patent Owner (verbatim or otherwise) with scant additional testimonial support. For a generalist court, an invalidity “winner” can be declared based upon invalidity burdens/standards, or a beauty contest of experts; most often this benefits Patent Owner.
The PTAB, on the other hand, is an expert agency that does not assess validity, but patentability. Here, this flavor of conclusory testimony is of little value to either party, but especially to a Patent Owner. And, of course, cross-examination of a witness that refuses to stray from that script is not a “win” for that declarant, but just further erosion of already thin credibility.
Yet, this is how most PTAB cases play out. With the losing party (most often the Patent Owner) coming to the unfortunate realization that district court practices fall flat before technically trained fact-finders that are assessing patentability.
Ideally, a declaration walks the Board though a testimonial narrative on the background of the art, the scope and content of the cited art from the perspective of a POSITA, and why the art meets the claims, or not (and perhaps some discussion of key claim terms or the subject patent). There is zero need for ultimate conclusions of law on obviousness, or even claim charts In fact, the Board cannot credit such legal conclusions.
Still most declarations are replete with largely useless claim charts and legal conclusions spanning reams of pages. Typically, the dispute will boil down to a handful of paragraphs in the Petitioner’s declaration that provide meaningful testimony on motivation to combine, scope and content of the art, and/or its combinability.
Petitioners would be wise to focus their attention on these important declaration sections and expand them, cutting overlapping, often verbatim filler. Patent Owners need to realize that little more than disagreement with Petitioner is not enough a PTAB patentability contest. That is, there are no favorable burdens or standards to leverage at the PTAB for Patent Owners. Likewise, attempts to mischaracterize the operation of the art is rarely effective before technically trained fact finders.