Preputnick v. Provencher

Informative decision only: persuasive authority, not binding precedent. When a party relies on an expert declaration for a written description challenge, and the expert states a conclusion without disclosing the underlying facts or data or explaining why it follows (here, that "first" and "second" contacts must differ in structure), the Board may give the testimony no meaningful weight. Applying the test of whether the original disclosure reasonably conveys possession of the claimed subject matter, the Board will read claim terms by their ordinary meaning under the broadest reasonable interpretation and will not add unrecited limitations such as "type of" to find the description lacking. No prior precedent directly addressed this issue in the text; the Board grounds its approach in paragraph 42 of the Standing Order on expert affidavits, which tracks Fed. R. Evid. 705 and 37 CFR 1.639(b) and 1.671(b). A party attacking a claim for lack of written description cannot rely on an expert's bare assertion about how the artisan would understand a claim term, and must have the expert explain the basis and why the opinion follows. The party defending the claim gains: its own expert's testimony, which gave reasons and illustrations such as front and rear tires, was credited over the challenger's conclusory declaration. The Board relied on Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089 (Fed. Cir. 1997), for the point that nothing requires the fact finder to credit an expert's unsupported assertions, and on Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991), In re Kaslow, and In re Sneed for the written description and claim construction standards. LEGAL TEST OR STANDARD: Written description is tested by whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter (Vas-Cath; In re Kaslow); possession is shown by describing the invention with all its claimed limitations (Lockwood; In re Wertheim). Claims receive the broadest reasonable interpretation consistent with the specification, in ordinary English meaning absent a special definition. Expert opinions must disclose the underlying facts or data, and opinions that do not may be given little or no weight. TRIGGERING FACTS: Junior party Preputnick moved to hold Provencher's claims 17-19 unpatentable for lack of written description, arguing that first and second contacts and first and second lead frames must differ in structure, although the specification used identical contacts molded in two different ways. Its expert, Mr. Granitz, stated that the artisan would understand first and second contacts by their configuration, but did not explain why identical items could not be labeled as two groups. The challenger therefore falls outside the rule when its expert supplies no underlying basis and the proposed reading adds an unrecited limitation such as 'type of' to the claim. KEY QUOTE: "We do not credit the conclusory testimony Mr. Granitz with any meaningful weight." (Paper 60, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 44 USPQ2d 1459 (Fed. Cir. 1997), and paragraph 42 of the Standing Order, and cites In re Priest, 582 F.2d 33 (CCPA 1978), against adding inferential limitations to claims. PRACTICE TIP: When an expert declaration supports a written description or claim construction argument, have the expert state the underlying facts or data and explain step by step why the opinion follows, because conclusory statements will be given little or no weight; conversely, in opposing such a motion, point out the conclusory nature of the declaration and offer a reasoned expert of your own.