Ex parte Baxter Int’l, Inc . 2009-006493 (March 18, 2010) [considering expert testimony]

Informative decision only: persuasive authority, not binding precedent. When an appellant offers expert or witness testimony to show skepticism or lack of a reasonable expectation of success, the Board may give it little weight if the witnesses spoke to the knowledge of a skilled artisan at a time significantly before the relevant filing date, the record does not show that technology did not advance up to that date, and the record does not show the witnesses considered the applied prior art that plainly discloses successful implementation. Testimony from witnesses who were unaware of the key reference has no substantial value against the examiner's prima facie case. No prior precedent directly addressed this issue; the decision cites no Board decision on weighing such testimony. For the challenger (here the examiner in reexamination), it shows that skepticism testimony can be discounted by pointing to its remoteness in time and to the witnesses' failure to consider the applied references. For the patent owner, it means expert testimony must be tied to the relevant filing date and to the actual prior art, and the owner should show that the witnesses reviewed the references. The Board relied on KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007), and on Federal Circuit authority including In re Huang, 100 F.3d 135, and Asyst Technologies, Inc. v. Emtrak, Inc., 544 F.3d 1310, for the related commercial success analysis. LEGAL TEST OR STANDARD: The Board stated no numbered test. It reviewed whether the examiner erred in refusing to credit expert testimony offered for skepticism or lack of a reasonable expectation of success. It considered (1) whether the testimony addressed the knowledge of a person of ordinary skill at a time significantly before the relevant filing date, (2) whether any evidence showed that touch screen technology did not advance up to the filing date, and (3) whether any evidence showed the witnesses considered the applied references before testifying. It also relied on the principle that on appeal an appellant may rebut with arguments and evidence, including secondary considerations (Ex parte Frye, citing Kahn). TRIGGERING FACTS: The witnesses (Lipps, Crnkovich, Kelly) testified about touch screen unreliability, cost and poor experiences from roughly 20 years earlier, the early 1980s, or 1988 (FF 23-25). The prior art (Sarns 9000 Manual, Rubalcaba, Kerns) plainly disclosed successful touch screens in critical medical systems. The appellant admitted that not a single witness from either Baxter or Fresenius had even heard of the Sarns machine. The appellant also argued the district court evidence was the same, and the Federal Circuit in Fresenius had sustained a jury obviousness verdict on that evidence. KEY QUOTE: "That admission reveals the lack of any substantial value in the relied-upon evidence vis-a-vis Appellant's argument." (Paper N/A, p. 28) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision follows Ex parte Frye, ___ USPQ2d ___ (BPAI March 1, 2010) (precedential), on the appellant's means of overcoming an obviousness rejection, and it applies KSR, 550 U.S. at 417-18. PRACTICE TIP: When submitting expert or fact-witness testimony of skepticism, make sure the testimony speaks to the state of the art as of the relevant filing date and that the witnesses reviewed and addressed the specific applied references. Otherwise the Board may discount it, and a witness's admitted unawareness of the key reference can be used against you.