“This is particularly problematic where expert testimony is offered to provide limitations that the prior art lacks, rather than merely to provide motivation to combine prior art teachings, as in the present case. ’” the commission wrote.
On Friday, February 10, U.S. Patent and Trademark Office (USPTO) Director Kathy Vidal issued a decision dismissing the inter partes review (IPR) petition due to the August 2022 Patent Trial and Appeal Board (PTAB) “Concluding Statement.” provided as a precedent. of the petitioner’s declarant;
The PTAB is licensed under IPR2022-00624 to Xerox Corp., et. Bytemark, Inc.’s US Patent No. 10,360,567 B2 failed to show a reasonable chance of winning to prove the disputed claims unpatentable. The patent is entitled “Method And System For Distributing Electronic Tickets Using Data Integrity Checking.”
The Board found that petitioner Dr. Jones’ opinion was the only evidence supporting petitioner’s assertion that the relevant prior art renders the patent claims obvious. “
Jones’ statement was “”[a] POSITA understands that such blocks are required to be recorded in the data records associated with that user’s account. Citing 37 CFR § 42.65(a), the PTAB states: “[e]Expert testimony that does not disclose the underlying facts or data on which the opinion is based is given little or no weight. ” and quote Upjohn v. Moba Pharmaceutical. Ltd, The Board shall:[l]However, confirmation of factual support for an expert’s opinion on a fact-based decision can result in testimony of little probative value in determining validity. “
The declarant did not cite additional supporting evidence or provide technical reasons, including failing to provide an interpretation of key terms. “This is particularly problematic where expert testimony is offered to provide limitations that the prior art lacks, rather than merely to provide motivation to combine prior art teachings, as in the present case. ’” the commission wrote.
In January, Vidal set a precedent for the December 2022 Director’s Review decision. Apple v. Zipit Overturns the PTAB’s adverse rulings in four inter partes reviews (IPRs) filed by Apple. Vidal’s decision concerned a waiver of dispute standard, which Vidal found was not met, based on the patentee’s comments in the minutes. Although the PTAB ruled against him in all four of his IPRs at issue and ruled that the patent owner waived the dispute, Vidal said: spontaneously “It is incomprehensible that defense counsel’s statements expressly waived the controversy of these cases,” and instead commented that “the board determined that petitioners had fulfilled their burden of proving by the preponderance of the evidence.” It was conditional on that,” he said. The disputed claims are not patentable. ”
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