What Evidence can the PTAB Use to Decide an IPR?

by Dennis Crouch

Inter partes review (IPR) is an incredibly powerful process for cancelling patent rights. We have a set of expert judges who are not afraid of digging into the details of a complex obviousness analysis.  Still, IPR petitions are strictly limited to petitions based upon obviousness and anticipation theories and “only on the basis of prior art consisting of patents or printed publications.”  35 U.S.C. 311(b).

Successful IPR petitions always focus on prior art as the central basis for cancelling the patent claims.  And yet, the petitioner usually also presents additional evidence to contextualize the prior art — most typically this comes in the form of expert testimony.

In its new petition for certiorari, Baxter Corp. argues that the statute does not permit supplemental evidence such as expert testimony.  Question presented:

Whether the Federal Circuit’s practice of allowing IPR petitioners to rely on evidence other than patents and printed publications, such as expert testimony, to fill in gaps in the prior art violates the plain text of § 311(b).

Baxter Corp. v. Becton, Dickinson and Co. (Supreme Court 2021) (petition).

In this case, the PTAB sided with the patentee and upheld the validity of Baxter’s U.S. Patent No. 8,554,579.  The Federal Circuit reversed that judgment on appeal. Although the prior art did not show all of the claimed elements, BD’s expert witness testified that the missing material would have been obvious. The Federal Circuit found the testimony credible and unrebutted and therefore rendered the claim obvious.

The case here comes down to one of statutory interpretation.  On the one hand, Baxter argues that 311(b) bars IPR petitioners from asserting of any evidence beyond the prior patents and publications in their original challenge grounds.  A broader approach would interpret the statute as purely focusing  on available prior art, but then permitting other forms of evidence directed toward other elements of the obviousness or anticipation analysis (such as level of skill in the art; likelihood of success; etc.).

(b) Scope. A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

35 U.S.C. 311(b).

Baxter also raises a second question in its petition focusing on the Federal Circuit’s approach here of imposing its own view of the facts:

Whether the Federal Circuit’s practice of resolving contested issues of patentability on appeal from Board decisions—rather than remanding those issues for the agency to decide in the first instance—violates the “ordinary remand rule.”

Petition, Question 2.   Here, the “ordinary remand rule” is an approach to appellate review of agency decisions. The approach is that a rejected agency decision “should
typically return the matter to the agency to address any outstanding questions in the first instance.” Petition;  See, e.g., INS v. Orlando Ventura, 537 U.S. 12, 16-18 (per curiam); Christopher J. Walker, The Ordinary Remand Rule and the Judicial Toolbox for Agency Dialogue, 82 Geo. Wash. L. Rev. 1553 (2014).

97 thoughts on “What Evidence can the PTAB Use to Decide an IPR?

  1. 16

    No lawyer worth his salt would write an IPR Petition with a gaping hole in the printed publication and use an expert to “plug” it. If people are getting all worked up about that scenario, it rarely if ever occurs. Rather, experts are used to explain what is disclosed by the printed publication (after all, many such publications are highly technical and so an expert is needed), to explain what the claim terms mean, and things of this nature. So most of the whining on this thread is based on a straw man argument.

    1. 16.2

      And the distinction between the two has been elucidated (removing — as best as I could — that notion of strawman).

    2. 16.3

      No lawyer worth his salt would write an IPR Petition with a gaping hole in the printed publication and use an expert to “plug” it.
      You would be surprised by what some attorneys will do to fit a square peg into a round hole.

      As part of the playbook every defense Litig8or follow, they say they’ll IPR your patent when you sue them (along with asserting that the patent is invalid under 101 and/or they’ll file a motion to transfer the case to NDCal). However, there isn’t always invalidating prior art, which means gaps need to be filled. So long as the PTAB and CAFC are willing to allow “experts” to do the gap filling, attorneys will be paying these experts for that service.

      Its great to have prior art to work with, but if you don’t, resourceful attorneys make it up as they go along.

  2. 15

    I do agree with Baxter’s point on the Federal Circuit improperly playing a role of a fact-finder. However, Baxter’s position on the scope of 5 U.S.C. § 311(b) is truly perplexing. As much as I would like to have PTAB reviews limited in scope, Congress fashioned PTAB procedures for post-institution proceedings on the merits similar to procedures in federal court trials. This is why IPRs are called AIA “trials.”

    To be sure, Baxter is correct that the IPR statute provides that challenges are to be made “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications,” 5 U.S.C. § 311(b) (my emphasis). The “ground” and the “basis” are constrained—but not the nature of the evidence. Evidence in support of the permissible “ground” in relation to the permissible “basis” of prior art must also be included in the scope of 5 U.S.C. § 311(b). If that interpretation is wrong—if Baxter is correct that “evidence other than patents and printed publications, such as expert testimony… violates the plain text of § 311(b)”—why then would Congress expressly and specifically require the Director to promulgate regulations for including such evidence in the proceedings? Under the statute, the “Director shall prescribe regulations:

    “setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—(A) the deposition of witnesses submitting affidavits or declarations.” 35 U.S.C. § 316(a)(5);

    “providing for the filing by the patent owner of a response to the petition under section 313 after an [IPR] has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response.” 35 U.S.C. § 316(a)(8).

    Expert testimony as to the scope of the prior art in patents and printed publications, and its relation to patentability under section 102 or 103 must clearly be admissible in IPRs.

    1. 15.1

      I guess that is the question. Is the expert testimony permissible as a substitute for prior art or is it intended to be permissible for such things as unexpected results, interpretation of what a reference actually teaches, etc. I think you should be able to submit any evidence subject to the rules but if it is a substitute for prior art, it should not be given probative weight unless it’s for something like common sense. But even for common sense, it must be instantly recognizable as such. If something was really obvious, where is the prior art? Why do you need to rely on testimony that merely asserts as such? On the other hand, if I am patent owner, I would need to find a rebutting expert who will be willing to say the contrary. If it’s unrebutted, you lose.

      1. 15.1.1

        Scrivener @15.1, there is no real question. Read the statute, it is clear:

        Challenges are to be made “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 5 U.S.C. § 311(b) (my emphasis). The conjunctive word “and” means that, contrary to your speculation, expert evidence cannot be raised “as a substitute for prior art” — it must also be based on, and directed only to, the permissible prior art — “patents or printed publications.”


          I agree with you that is how it should be. But I think the CAFC probably thinks as long as there is some prior art to support the obviousness, you can use prior art as a substitute to make up for some elements that might be missing in the prior art.


            I meant you can use testimony as a substitute for prior art as long as some prior art reference forms the basis for the obviousness.


                Technically speaking, yes. But the CAFC must be interpreting the statute as permitting such as long as there is some prior art to support the obviousness. That is, a reference forms the basis because it has most of the claim limitations but lacks one element that is accounted for in the declaration.

                1. It is more than merely “technically.”

                  Else, you have a clear legal error.

                  Whether or not the CAFC has engaged in a clear legal error does NOT change a clear legal error into not being a clear legal error.


                anon, I don’t necessarily disagree with you that maybe CAFC is wrong, but we have to keep in mind that KSR also said that we can’t focus too much on only prior art. There are other things such as common sense, etc. that are not readily explicated in the prior art. Now, Congress may have accounted for this in the statute and excluded such obviousness analysis using non-prior art rationales based, in part or whole, on common sense, etc. from being put forth in an IPR–i.e., that must be contested elsewhere. Hopefully, this gets settled.

                1. but we have to keep in mind that KSR also said that we can’t focus too much on only prior art

                  KSR is inapposite to the current legislation under focus.

                  If Congress wanted to use different words, they could have (and they still can).

                  Methinks that you want to “settle” something that is already so (and again, just because the courts are mucking this up does NOT mean that the law is actually already settled): My 8:40 am message still applies.


            Scrivener, I agree with you that the CAFC was treading on shaky ground. The root cause of the blurry contours separating the prior art and testimony surrounding or interpreting the prior art, is the CAFC’s improper usurpation of the fact-finder role in this case. Had the CAFC done what it was supposed to do under the APA — deferential review of the PTAB’s fact-finding, setting it aside only if “unsupported by substantial evidence,” 5 U.S.C. § 706, than those lines would not have been blurred. The Court would not have improperly engaged in substituting its own judgement for that of the PTAB by second guessing the proper weights of evidence and testimony in rendering judgement. Integrating and weighing the testimony and other evidence to render judgement is the exclusive role of the PTAB.


              This is an “Ends justifying the Means” problem (not the only one afflicting patent law — and certainly spurred on by the Supreme Court and its fire/hose training of simians in a cage; Roberts should be more concerned about that).



              Yup. Thanks Ron for taking the time to write this out.

              You definitely are right.

              This is just another case of the CAFC not trying to create jurisprudence that helps patent law but doing pretty much anything they can get away with to limit the patent right and invalidate patents.

              The core problem with patent law is judges on the CAFC.

  3. 14

    Re: “Inter partes review (IPR) is an incredibly powerful process for cancelling patent rights. We have a set of expert judges who are not afraid of digging into the details of a complex obviousness analysis.”
    I think the main difference is the difference between multi-thousands of dollars prior art searches for IPRs in response to being sued for millions, presented inter parties, versus a few hundred dollar U.S. PTO examiner prior art search, and an ex parte examination.
    What is the current percentage of applications now being allowed by U.S. PTO examiners? [Without counting re-filed applications twice.] I heard a rumor that even 85% is acceptable, and I do wonder if knowledge of the PTO IPR or reexamination “backstop” is logically in the background? Are examiners aware that in some highly popular patent suit District Courts like Waco Texas that the defendant is highly unlikely to get any IPR or other reexamination?

    1. 14.1

      Your views sound in an (unstated) support of moving to a pure registration system there Paul.

      We could then transform the multi-BILLION innovator-funded patent office into a less than a million a year repository, and eliminate all those no-good examiners, eh?

      Certainly, along that path, one would consider rescinding the statutory presence (and level) of the presumption of validity, but to mewl about “not a proper job” and want to keep that job seems more than a bit discordant.

  4. 13

    If I’m being less tongue-in-cheek, then I see it this way.

    The challenge doesn’t work for me.

    In relevant part, the text of § 311(b) states: “only on the basis of prior art consisting of patents or printed publications.” So it’s clear I think to everyone the goal of this part of the statute is to limit the types of prior art that can be used.

    But then, what types of prior art exist in the first place? I think a natural place to look is § 102(a), because the heading includes the term “prior art.” That identifies it as setting out a definition of that term.

    MPEP § 2152 has a nice description of § 102(a), so I’ll just quote it in full:

    The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(a)(2). These documents and activities are used to determine whether a claimed invention is novel or nonobvious. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(1) may be based are an issued patent, a published application, and a non-patent printed publication. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are U.S. patent documents only … . Evidence that the claimed invention was in public use, on sale, or otherwise available to the public may also be used as the basis for a prior art rejection under 35 U.S.C. 102(a)(1).

    In other words, § 102(a) defines the full complement of prior art—the “categories of prior art documents and activities”—that is potentially available in the first instance. All § 311(b) does, as I see things, is knock out certain possibilities from that existing list. Specifically, it removes all categories the MPEP characterizes as “prior art … activities.”

    But that’s all § 311(b) is meant to accomplish. According to § 102(a), expert testimony isn’t even considered a type of “prior art” in the first place. So there’s nothing in § 311(b) to suggest it has any effect on the use of expert testimony. Put another way, § 311(b) simply operates to cabin the scope of prior art made available by § 102(a). But expert testimony is outside the scope of the latter, and thus falls outside the scope of the former too.

    If you think of Congressional purpose, it makes sense as well. Congress meant for IPR to be a fast and efficient process. Using MPEP nomenclature again, Congress had good reason in § 311(b) to exclude the “activities” categories of prior art from IPRs. Such categories typically involve extensive amounts of document and deposition discovery, sometimes from third-parties. That’s not very efficient, so it undermines one goal of IPRs. It’s also time-consuming, which undermines the other. But expert opinion—even treating it as a kind of prior art for the sake of argument—doesn’t pose the same problems as “activities” prior art. Expert discovery is just some declarations, a deposition, and that’s it. Congress had no reason to be concerned about that. Moreover, when “activities” prior art is excluded from consideration, as in IPRs, the scale of expert discovery shrinks correspondingly, because to some extent it’s a function of underlying art at issue.

    Lode_Runner’s citation to § 312(a)(3)(B) further bolsters the case against the petition’s (first) argument. For me, it’s not so much that the statute permits the use of expert testimony in general, although it clearly does. Rather, it’s that the statute treats expert testimony as altogether distinct from prior art. While both prior art and expert testimony fall under the heading of “evidence that supports the grounds for the challenge to each claim” in paragraph § 312(a)(3), they occupy distinct subparagraphs. Prior art—i.e., “patents and printed publications that the petitioner relies upon in support of the petition”—lives in subparagraph (A), but, as stated, “affidavits or declarations of supporting evidence and opinions” inhabit a different subparagraph, (B). So, Congress recognized that, beyond relying on patent and publication prior art, a petition could also rely on whatever support might be obtained from expert testimony—regardless of whether such testimony supposedly “fills in gaps” left by the aforementioned prior art.

    Given all that, especially the previous paragraph, I find the first QP (faithfully reproduced in the OP’s title, so no quibble with Prof. Crouch there) to be somewhat inaccurate. In particular, I take issue with the phrasing “allowing IPR petitioners to rely on evidence other than patents and printed publications” (emphasis added). That’s because § 311(b) isn’t a general ban on types of evidence; it only prevents using specific types of prior art. So the only proper way to phrase that part of the QP would be “allowing IPR petitioners to rely on prior art other than patents and printed publications”; and in that case, if CAFC did in fact allow petitioners to use some prohibited art like say public use, then yes, it would certainly violate the statute.

    One other aspect of the QP that troubles me is “to fill in gaps in the prior art violates the plain text of § 311(b).” (emphasis added). It assumes that § 311(b) implements a prohibition on how—or for what purpose—certain evidence is used. But, as shown above, that’s not how the statute works. Rather, it simply forbids using certain types of evidence, and specifically it only prohibits using certain types of prior art. If a type of evidence such as expert testimony—which again, isn’t even prior art anyway—is permissible to use in the first instance, then § 311(b) has absolutely nothing to say about the purposes such evidence is used for. And § 312(a)(3)(B) clearly makes expert testimony available for use—with no limitation on how it’s used.

    Two practical points in closing. First, Congress obviously knew about the (trying to use a neutral expression here) “debate” over potential prior art “gap filling” long before the AIA came on the scene. That debate had been taking place for ages in the context of the district courts applying obviousness law. So if Congress had wanted to address that subject, it could easily have done so in a way that was readily apparent, not in a statute that (1) doesn’t even mention expert testimony and (2) is procedural, not substantive. That last point is really important I think, because clearly Congress didn’t intend to modify the substantive law of obviousness when establishing IPRs. Likewise, IPRs have been around for close to a decade at this point, so if Congress really saw the phenomenon described by the first QP as a problem, it could have clarified or amended the AIA by now.

    Second, going back to the QP again, the phrasing “the Federal Circuit’s practice of allowing IPR petitioners to rely on evidence … such as expert testimony, to fill in gaps in the prior art” (emphasis added) is interesting. Of course, Baxter filed this petition because it ended up on the losing side when the case got to CAFC. But is it really “the Federal Circuit’s practice” that Baxter specifically takes issue with? Presumably the PTAB also considered the same argument from Becton based on testimony by its expert, but just didn’t find it persuasive. And Baxter was ok with that. Baxter only had a problem when CAFC came out the other way. I also suspect that in other cases, the CAFC rejects this kind of argument, just like the PTAB did here. Maybe sometimes the PTAB accepts it too. So I’m not sure how any sort of general “practice” is implicated, or one that’s unique to CAFC. It seems more like Baxter is upset about the outcome in its particular case. If it were truly being consistent, it would insist that such a “gap-filling” argument could never be entertained in the first place—whether by PTAB or CAFC, and regardless of how either tribunal might ultimately decide the issue.

    Wow, this was really prolix, but I like to spell things out in detail to make sure I don’t have any logical gaps (no pun). Anyway, I give Baxter some points for cleverness, and I can understand why they’d want to file this petition, but I don’t rate its likelihood of success (again, no pun) too highly.

    1. 13.1

      “Points for cleverness?”

      Sanctions would be far more appropriate for the ludicrous “arguments” Baxter threw at the wall here.

      1. 13.1.1

        Ha! Well, not sure I’d go that far. Maybe losing the patent claims and being out of pocket for the pricey services of Willy Jay et al. from Goodwin for an unavailing petition is punishment enough.

        Again, if there’s any cleverness, it’s not in the substantive arguments themselves. It’s only in the packaging of the arguments to make it seem like an IPR-specific issue, thus bolstering the case for granting cert for a petition originating from the PTAB. I don’t think it’s going to be convincing at SCOTUS though.

        On that note, BD’s opposition brief is due Jan. 3. It’ll be interesting to see if they opt not to respond, or, if they do or the Court mandates a response, what they have to say on the issue.

  5. 12

    35 USC Section 312(a)(3)(B) flat out says that an IPR petition can include “affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions,” and 316(a)(5)(A) expressly authorizes “the deposition of witnesses submitting affidavits or declarations.” The statute is clear, while you can only challenge a claim in IPR under 102 or 103 based on patents and printed publications, you can support that challenge with expert testimony.

    Baxter’s argument under Section 311 seems more directed at how the Federal Circuit used the expert testimony rather than whether expert testimony is permissible in IPR generally. The expert testimony here was used to support a single-reference-obviousness theory for a disputed limitation, but that expert’s theory appears to have been grounded on combining express teachings from the cited reference, so this isn’t a case where the expert testimony was used to entirely conjure a limitation out of whole cloth.

    A better factual scenario for a future Section 311 argument like this might be a true case of “filling in,” in which at least one limitation was completely absent in the cited patents or printed publications, and found based solely on expert testimony, e.g., using “common sense” to supply a missing claim limitation in an obviousness analysis.

    1. 12.1

      Thanks for the cite to 35 USC Section 312(a)(3)(B), and note it is stated as being part of what may be “evidence.”

  6. 9

    The PTAB can use all the evidence that the statutes say they can use, and in conformance with the Federal Rules of Evidence to the extent they are applicable.


          What part of what he** said being untrue do you think that I stated?

          You jump too soon (at phantoms in your own mind).

          Rent free, tis be.

          ** a pattern as well is showing between these monikers, and one much like my shifting historical pseudonym’s friend and his 0bsess10n with me


            Thank you for proving my point. Once again, your face has been ground down into the muck and filth that spawned you.


              What exactly IS “your point?”

              MCI, the only point being proven is not yours (unless of course, you are trying to make the point that you are a purely reactionary person, and upon seeing a post from ‘anon,’ you lose all reason).

              As to whose face is being ground down, you are doing that projecting thing again, Maybe instead of jumping to an unsustainable assertion, you take a moment and answer the question put to you:

              What part of what PPO said (here at his post of 9) did I state as being untrue in my response (here at post 9.1)? The words in black and white are plain and direct. I “get” that you want me to be in some type of error, but no such error on my part is here. The error is entirely upon you and your loss of control of your emotions.


                You keep swinging and missing, but you keep trying. Bless your heart.

                1. What exactly did I miss at?

                  Come now, are you going to be like my pal Shifty and not be able to hold an actual conversation or answer simple and direct questions?

  7. 8

    This is a very interesting petition. Like most, however, it very likely won’t be taken up by the Supreme Court.

    To address some of the comments below, I think the difference as to what is permissible and what is not with regard to expert testimony might be classified as follows:
    Permissible: Explaining what a reference teaches. If reference A teaches X, Y, and Z, an expert may explain that Y also refers to Y’ and Y”.
    Impermissible: If reference A teaches X, Y, and Z, but there is also needed a teaching of G between X and Z, you cannot use expert to supply that missing limitation.

    Of course, there will always be some fine lines between the two, but since the statute is plain on its face, I don’t think it is permissible to use expert testimony in place of a patent or printed publication.

    1. 8.1

      Depends on what Y’ is wrt Y. For example, halogen means Cl, F, etc. Even for official notice, it should be limited to something that is instantly recognizable, such as water boils at 100 C at 1 atm.

      1. 8.1.1

        patent scrivener: I don’t really agree with you since the petitioner has all the chance in the world to put together their invalidity arguments.

        Also, there is an issue of fairness trying to make it look like their are wholes in your arguments (so maybe the patentee doesn’t put as much money into the response as they would) and then fill in the gaps with expert testimony.

        I would think that the line should be called against the petitioner as they can easily fill in any gaps with prior art and are supposed to put together their best argument for rebuttal by the patentee.

        The CAFC got another one wrong and not surprisingly it is against the patentee.


          I agree with you to the extent that whatever is put forward by the petitioner is unrebutted by patent owner. I think it’s what happened in this case. But the patent owner should challenge any expert testimony that is not founded on factual evidence. Merely saying it is so does not make it so and factfinder is free to give such testimony little or no weight.


          Yes, but PTO examiners are not under any Rule constraint to use the FRCP Federal Rules of Evidence, unlike IPRs.

  8. 7

    Statutory construction:

    “a patent only on (1) a ground that could be raised under section 102 or 103 and only on (2) the basis of prior art consisting of patents or printed publications”

    (a) Does this mean a claim can be invalidated based upon (1), and a claim can be invalidated based upon (2)? In that there are two choices one can use to invalidate a claim? The first is based upon all of sections 102 and 103 (think on sale bar for another 102 bar). The second is based upon printed patents or publications.

    (b) Or, does this mean that a claim can only be invalidated on a ground that meets both (1) and (2)? In that the 102 and 103 invalidation must only be based upon printed matter?

    If the correct interpretation is (a), then one can use all of the subsections of 102 to invalidate a claim, e.g. on sale bar. But, I haven’t’ seen an IPR that used this as a basis for invalidity. If the interpretation is (b), then the statute really was intended to be limited to printed matter. How does expert testimony that is used to say fill-in the gaps of a single reference 103 rejection comport with this statutory interpretation?

    1. 7.1

      It looks like you want to “interpret” the connecting “and” to be (instead) a connecting “or.”

      Congress knows full well how to write a list in an ‘optional’ manner, with choices being ‘in the alternative,’ so I would deny that your attempt can properly fall into Statutory Interpretation.

    2. 7.2

      Plus, comments in the record clearly indicate that the change was meant to limit challenges to be based strictly on the type of “written evidence” that would engender a quicker and more decisive decision.

      There is no support for your wider version.

      1. 7.2.1

        Re: “comments in the record [for IPR enactment] clearly indicate that the change was meant to limit challenges to be based strictly on the type of “written evidence” that would engender a quicker and more decisive decision.”
        Yes, and far less issues, and far less need for testimony or discovery, than normal litigation. Even in contrast to other post-grant review systems in the same APA set of statutory changes.


          Indeed. Conclusory assertions made by experts render the case unreviewable on appeal as no facts are presented to make a challenge as to the assertion. If well known, in what context (notwithstanding KSR)?

  9. 6

    Let’s not get too hyper-technical in applying these statutes. What if a claim is to a chemical compound X that is 100% effective against the Covid-19 virus but a prior art reference discloses the same chemical compound X without describing its INHERENT anti-Covid property. Is Baxter saying that a declaration with experimental evidence showing the inherent property can’t be used to prove anticipation? That is contrary to a primary purpose of the AIA, which is to provide an inexpensive alternative to litigation in deciding validity.

    1. 6.1

      Sorry, but no — you are applying the logical fallacy of “The Ends justify the Means.”

      This is NOT some wooden “hyper-technical” application of the law, this is faithfully applying the law as written and processed.

      Our society has every ability to change that written law (with fully PROPER Means).

      1. 6.1.1

        No no no. The declaration is merely submitted to explain what the reference actually disclosed. Remember anticipation what a reference teaches either inherently or explicitly.


          patent scrivener is correct. There is a big difference between providing expert testimony to explain or interpret and expert testimony supplementing an element not in a claim.


            Did you mean to state (my emphasis): “expert testimony supplementing an element not in a claim.”…?


          I notice how this, “declaration is merely submitted to explain what the reference actually disclosed.” is not the same as your current posts above.

          Did this morph, or did you mean the same thing all along?


            That’s just an example—e.g. a declaration to show that something is inherently disclosed. That’s always permissible. This case seems to be using a declaration to make up for something missing in a reference.


              So I take that the answer to my question is that your posts today have morphed from your earlier position.

              (as I noted, the “That’s always permissible” would fall to the proper taking of Official Notice) – I’m just drawing a distinction between your earlier post (to which I did not have a qualm) to your more recent posts.


                No it has not morphed. There is difference between testimony to establish something like inherency of a limitation in the cited prior art and testimony that pulls out of thin air that a claim limitation would have been obvious (without citing any prior art to support it).

                1. Your answer here shows that your posts HAVE morphed.

                  Yes, there is a difference, and that is exactly the point that I am presenting.

  10. 5

    It’s a poorly drafted statute, as usual. I’ll bet the drafters were merely thinking about what references can be included in a statement of the rejection (i.e., claim 1 is obvious in view of References A, B, and C) rather than the totality of evidence that must be considered in, e.g., a 103 rejection including secondary considerations, etc.

    1. 5.2

      Agree – poorly drafted statute. If the interpretation of the statue allows expert testimony (non printed patent or publications) to determine inherent properties of a printed patent or publication, why wouldn’t that same interpretation also allow invalidation based upon an on sale bar?

      1. 5.2.2

        On sale bar might be different because there is no printed publication or patent that underlies the 102 or 103.


          Avoiding that error does NOT mean that this statute is not that p00rly written, Mr. IPR Cheerleader.

  11. 4

    This presents an interesting catch-22 because an obviousness analysis is supposed to be done from and consider the interpretation of a person having ordinary skill in the art. How are the APJs to understand the knowledge base of a PHOSITA if there is no expert testimony or expert declarations? Most patents and printed publications don’t establish the requisite knowledge (review articles in journal publications might establish that properly), and the Supreme Court is where this was unambiguously established. Also, based on the priority date of the patent at issue, the knowledge base available for the PHOSITA will change. How would the APJs establish that level of knowledge as of the priority date without information provided by experts in the field?

      1. 4.1.1

        The point is, Night Writer, is that establishing the Graham Factors cannot be done solely with patents and printed publications.


          No that is not the point. The point is “[a]lthough the prior art did not show all of the claimed elements.”

          The point is that expert testimony should not be used for proclaiming an element not in the prior art would have been obvious.

          Probably OK to interpret the combination but not to supplement with an element not in the prior art.


            Yes, that IS the point.

            You might be looking at a different point (and that’s ok), but THAT is the underlying conundrum here.


              No I am fine anon. You are acting odd again. Read my 3.1 comment made before any of your comments.

                1. Ok. My point was to illustrate In re Baxter Travenol which ok’d extrinsic evidence to explain something. I agree you couldn’t use extrinsic non prior art evidence to show a missing claim element even if it is just a dependent claim. If known it should be shown with prior art, not merely a declaration.

                2. The conversation does (to me) invoke the notions of when — properly — an Examiner may invoke Official Notice.

                  Hint: examiners often do NOT comply with what is required.

                  I do note though that judges are not examiners and thus, “your mileage may vary.”

                3. patent scriviner,

                  the starting point in this sub-thread were the comments of Dvan – not your comments.

                  As may well often be the case, the comment thread contains more than one conversation.


            Yes ok. Maybe you can exclude testimony designed as a substitute for prior art to show an element is well known as lacking factual foundation and merely conclusively. That is, require the prior art evidence.

    1. 4.2

      No fact finder can be expected to possess complete knowledge of a subject. The exclusion of expert testimony by statue is likely a failure of due process, and to the extent that an APJ is a quasi-judicial figure, a quasi-separation of powers issue as well.

      1. 4.2.1

        But a fact finder is free to discount testimony as lacking an adequate factual foundation. Maybe per se exclusion is not appropriate.

  12. 3

    The statute needs to be amended to include:

    (b) Scope. A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications. …

    “or the opinions of Federal Circuit Judges whose opinions should be deemed as from expert testimony.”

    I’ve wondered about all this expert testimony that has been put into the record. I watched a CLE from a person that does a lot of IPRs and his recommendation was to put all that expert testimony in the record during prosecution as it wasn’t really clear that this was permitted during an IPR.

    1. 3.1

      For this case, I think the patentee is right. Even in prosecution an examiner can’t just make up an element without providing evidence and here the evidence they are providing is not listed as acceptable evidence.

      I get that people are trying to slip this in under other types of evidence but it is an element of the claim and if you can’t find an element of the claim in the prior art, then it probably isn’t obvious. And there is no need to allow the expert testimony to slide into whether an element is obvious or not as you can surely always find it in a printed publication or prior art.

      1. 3.1.1

        Re: “..if you can’t find an element of the claim in the prior art, then it probably isn’t obvious.”
        But he opposite of that occurs in obviousness decisions all the time. Examples include dependent claims or amendments adding things well known in the art for being added to what was claimed in the parent claim. Like “wherein said ‘computer output display’ of claim 1 comprises an LED screen” or “wherein the ‘fastening system’ of claim 1 includes plural screws,” or “wherein said ‘battery charging system’ includes an overcharging protection circuit,” or “wherein said two different plug connectors are painted two different colors,” or “wherein the efficacious composition of claim 1 is drunk with water,” etc., etc., etc.
        [Yes, it is much better to cite actual patents or publications for even those, if you can find them.]


          Paul we are talking about filing a petition to invalidate claims. The petitioner has the burden to show that all the elements are in the prior art.

          And I could within 30 seconds find all the elements you listed above in a patent or publication. It would be then my job to cite that in the IPR petition to institute.

          I can’t forget an element and then try to make it up with expert testimony.


            Night Writer,

            Your reply above appears to indicate that the expert testimony is offered at a later point than the petition, and is doing so because the petition is (or is found to be) insufficient.

            That may not always be the case for the topic at hand.

            Crouch leads with (my emphasis): “And yet, the petitioner usually also presents additional evidence to contextualize the prior art — most typically this comes in the form of expert testimony.

            This is indicating a SINGLE presentation (and thus, is prior to any Institution decision which only then may open the door for the later-in-time additions that appear to be your focus).

            While you may be pursuing a fair (and separate) point, I will remind you again that there are points that you are not recognizing. This is NOT to say that your comments on YOUR point are in error, merely that you are not addressing OTHER points in the dialogue.

  13. 2

    Great advocacy for inventors. Why did we let the infringer lobby get away with this for ten years? Why are there so few objections to the destruction of our gold standard patent system?

    1. 2.1

      “Why are there so few objections to the destruction of our gold standard patent system?”

      Why? In material part because Big Tech wants to keep all (well; all except what they hand out to their army of lobbyists, paid off academics, and politician “contributions”) their ill-gotten gold for themselves.

      Most startling is that — despite their repeated complaints about Big Tech — Congress nevertheless lets them get away with it.

      1. 2.1.1

        Pro Say,

        Follow the money.**

        Virtue signaling is cheap – following through (e.g., see Tillis) may be quite the different story.

        ** What we really need is to un-capture Congress from Dark Money and the influences of “Corporate Citizens” (read that as a starting point would be to abrogate Citizens United).

  14. 1

    An interesting attack on IPR petitioner declarations re claim elements not fully taught in the petitioner-cited patents and applications as being obvious.*
    [Although not the greatest case to make this argument in, if the claim feature in dispute is a selection of written matter to be displayed?]
    A counter-argument may be that any obviousness analysis, per 103, KSR, etc., should establish the level of skill of, and accept general knowledge or common sense of, the POSITA. Also, that since both parties can file declarations on that subject [and on proper claim scope], the patent owner should not be leaving the petitioner declaration unrebutted.
    *[That IPR declarations cannot present other actual prior art is not in dispute.]

    1. 1.1

      As for cert question 2, re “the Federal Circuit’s practice” the Fed. Cir. does in fact fairly often remand it’s unsustained IPRs back to the Board on factual or due process evidence needing issues.

    2. 1.2

      “the patent owner should not be leaving the petitioner declaration unrebutted.”


      Though they should, it’ll be surprising if SCOTUS takes this case.

      1. 1.2.1

        Yes. Maybe this case is more about lawyering skills than whether declarations can be used to supplant the prior art.

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