Xerox Corp. v. Bytemark, Inc.

When a petitioner's expert declaration merely repeats verbatim the petition's conclusory assertion and cites no additional supporting evidence and gives no technical reasoning, the Board may give the declaration little weight and may not treat it as evidence supporting the assertion. This is especially so where the testimony is offered to supply a claim limitation missing from the prior art, rather than a motivation to combine. Without other support, the petitioner fails to show a reasonable likelihood of prevailing under 35 U.S.C. § 314(a). No prior Board precedent is named in the decision as directly addressing this issue; the Board relies on 37 C.F.R. § 42.65(a) and Federal Circuit case law. For petitioners, an expert declaration that parrots the petition's wording adds nothing, and a petition resting on it can fail at institution, here as to all challenged claims, including claims 7 and 11 which depended on the same combination. For patent owners, a preliminary response can point out that the declaration only restates the petition and offers no facts or reasoning, and can argue that a missing limitation is being supplied by unsupported opinion. The Board relied on 37 C.F.R. § 42.65(a), Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000), Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 138 (Fed. Cir. 1986), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), and Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1361-62 (Fed. Cir. 2016). LEGAL TEST OR STANDARD: Institution requires a reasonable likelihood that the petitioner would prevail as to at least one challenged claim, 35 U.S.C. § 314(a). Under 37 C.F.R. § 42.65(a), expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. The Board found the declaration conclusory and unsupported, adding little to the assertion it was offered to support, and so entitled to little weight. TRIGGERING FACTS: The petition's only support for a missing claim limitation (storing a data value indicating fraudulent activity in a data record associated with the user account) was a paragraph of Dr. Jones's declaration (Ex. 1003 para. 54). That paragraph repeated the petition's assertion verbatim, cited no additional evidence, and gave no technical reasoning. The testimony was offered to supply a limitation missing from Terrell, not to show a motivation to combine, and the petitioner did not allege the limitation was unusually simple or the technology particularly straightforward. KEY QUOTE: "Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight." (Paper 9, p. 15) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Petitioners should make sure each expert paragraph supporting a key assertion, especially one supplying a missing claim limitation, cites underlying evidence and gives its own technical reasoning, and should not copy the petition's language into the declaration.