USPTO examiner and the PTAB can rely on expert declarations in reexamination as long as declaration relates to factual findings

During reexamination of a patent, the examiner found certain claims obvious over prior art references. The patentee appealed the examiner’s finding to the Patent Trial and Appeal Board (PTAB), which affirmed the rejection. The patentee then appealed to the Federal Circuit. 

The Federal Circuit first determined that the patentee did not waive its argument that the examiner erred by improperly relying on “legal conclusions” from the petitioner’s expert declaration. The court chose to consider the patentee’s arguments because “the issue has been fully briefed, the record is complete, there will be no prejudice to either party, and no purpose is served by remand.” The Federal Circuit then dismissed the patentee’s argument that the examiner erred by “extensively” citing to statements regarding obviousness of the claims that appeared in the expert’s declarations, emphasizing that it frequently affirms PTAB obviousness determinations that rely on expert declarations when “aspects of the declaration relate to factual findings.” The Federal Circuit concluded that the expert’s declarations in this matter did include sufficient factual findings that could be relied upon to support the claim rejections. As the PTAB did incorporate factual findings that the examiner actually made, and for which there was sufficient evidentiary basis, the obviousness rejection of certain claims was affirmed. 

The Federal Circuit reversed and remanded the PTAB decision as to a number of other claims, however, finding that the PTAB’s decision was not supported by substantial evidence. For those claims, neither the examiner nor the PTAB provided any explanation of how the facts supported the decision that the claims were obvious. Instead, the examiner and the PTAB improperly relied entirely upon attorney arguments by the reexamination petitioner which the court noted “is not evidence.” 

In conclusion, Judge O’Malley dissented in part to assert the view that remand is not the appropriate remedy when the PTAB fails to meet its burden of establishing unpatentability during reexamination.