The Board has moved the 103 target without warning.

As noted in last month’s article on POPR (Patent Owner Preliminary Response) declarations, the Board is using POPR declarations to deny institution for lack of motivation to combine 80% of the time a denial includes a POPR declaration. And over the last 3-6 months, this same reasoning, no proof of motivation to combine, has crept into more and more final written decisions. But what does the Board mean by “the Petitioner did not supply proof?”

Clearly, almost all petitions are filed with a supporting declaration of an expert. And almost all experts are found to be competent to testify in the claimed technology. And most experts supply testimony based on their education and experience how and why a person of ordinary skill in the art (POSA) would look to Ref B from Ref A and want to combine. What more is needed?

In the end, it appears that attorney argument supported by expert testimony is not going to be enough going forward for motivation to combine if it is not corroborated by secondary evidence. More is needed from petitioner. This complies with Board rules, i.e., 37 C.F.R. § 42.65, directed to what is required for the Board to provide weight to expert testimony. Namely “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” The rule has been sitting right there from the beginning, but most practitioners have given it little heed. Rather, we have seen time and again a near parroting of the attorney petition arguments into the declaration, or vice versa, without more.

In some technologies, simply explaining how and why a POSA would combine references was enough for the Board. It appears that is no longer the case. We are seeing a trend - from simple mechanical technologies to cutting edge, complex electrical technologies – in which the Board is not taking the petitioner’s expert at their word. They want more. So what is more?

From our research of the decisions, “more” appears to be books, articles, other patents, etc. that actually demonstrate that other engineers or inventors have already thought to make the combination. These documents may not be easily authenticated or demonstrated to be prior art, but they are ripe for use as corroboration of an expert’s testimony.

So, when these types of sources are used, how does the petitioner keep them from being treated as part of the ground so any difficulty in demonstrating the corroborating evidence is prior art does not affect institution? From our research, it appears the solution is to keep the evidence primarily in the declaration as corroboration of expert testimony. The petitioner can then provide appropriate references to the evidence in the petition. Looking at the same trend from the Patent Owner’s perspective, you need to understand this trend and how best to use it to gain non institution, or if you are already in trial, to receive a favorable final written decision. It would appear the Board is saying that any POPR or POR (Patent Owner Response) lacking attacks of this nature may not be providing the best defense available. And our March 2018 article attests to that. We have even seen a case where Ref A was obvious to combine with Ref B, but Ref B was not obvious to combined in Ref A. Exacting standards are being applied.

In the end, both sides of the “v” need to understand and take advantage of this trend to strengthen petitions and POPRs/PORs alike.