Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 91 PTCJ 191, 11/20/2015. Copy-
right 姝2015 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
PATENTS
The authors offer advice to both petitioners and patent owners on submitting experimen-
tal evidence in a post-grant opposition proceeding.
Considerations for Submission of Experimental Evidence to the Patent Trial and
Appeal Board
BYANDREJ BARBIC,PH.D., AND JONATHAN B.
ROSES
Experimental evidence can be a powerful tool in
succeeding in an inter partes review proceeding,
particularly in the case where inherent properties
of prior art are at issue. As indicated by the require-
ments of 37 C.F.R. § 42.65(b), the Patent Trial and Ap-
peal Board evaluates such experimental evidence and
the methodology by which it was obtained. Since the in-
ception of the IPR process, the Board has addressed the
submission of experimental evidence only a handful of
times.
The authors have reviewed a number of PTAB deci-
sions where at least one party submitted experimental
data, identified some general themes, and provide the
following observations on the PTAB’s evaluation of ex-
perimental evidence.
I. Should Experimental Evidence Be Included In
the Petition?
PTAB panel decisions have found that citation to ex-
pert testimony in a petition must also discuss the evi-
dence underlying the expert’s opinion in the petition it-
self, rather than relying on disclosure in another docu-
ment. For example, in Daicel Corp. v. Celanese
International Corp., the panel dismissed Petitioner’s
multiple citations to their expert’s declaration as being
solely ‘‘in support of conclusory statements . . . without
discussing the underlying evidence in support
thereof.’’
1
Citing 37 C.F.R. § 42.6(a)(3), the panel stated
that ‘‘[Petitioner]’s more detailed analysis cannot be in-
corporated by reference into the petition.’’
2
This ap-
pears consistent with PTAB statements in other con-
texts that petitioners cannot avoid the 60 page limit for
petitions by providing the required analysis in a differ-
ent document.
3
In Purdue Pharma L.P. v. Depomed, Inc. (‘‘Depomed
I’’), the Petitioner argued in a request for rehearing that
1
IPR2015-00170, Paper 14 at 20 (P.T.A.B., Decision Deny-
ing Institution, Apr. 1, 2015).
2
Id. at 20-21.
3
See Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-
00454, Paper 12 at 6-10 (P.T.A.B., Decision Denying Institu-
tion, Aug. 29, 2014).
Andrej Barbic, Ph.D., is a counsel in Wilmer-
Hale’s Boston office and is a member of the
firm’s Post-Grant Proceedings Group. He
focuses on post-grant proceedings in the U.S.
Patent and Trademark Office, U.S. and for-
eign patent counseling and portfolio develop-
ment, and patent litigation, particularly
Hatch-Waxman litigation.
Jonathan B. Roses is a Senior Associate in
WilmerHale’s Boston office and is a member
of the firm’s Post-Grant Proceedings Group.
He provides an array of advice to clients prac-
ticing in the fields of chemistry, pharmaceu-
ticals, biotechnology, materials science and
consumer products.
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