USPTO Director Affirms Rejection Of Invalidity Arguments Supported Only By Expert Declaration Parroting IPR Petition
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  • USPTO Director Affirms Rejection Of Invalidity Arguments Supported Only By Expert Declaration Parroting IPR Petition

    On February 10, 2023, Director of the U.S. Patent & Trademark Office Katherine K. Vidal issued a decision affirming a Patent Trial and Appeal Board decision to deny institution of inter partes review.  Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (Feb. 10, 2023).  The Board had found, and Director Vidal agreed, that Petitioners’ expert testimony was entitled to little weight because it merely repeated, verbatim, the conclusory arguments in the petition itself.  Director Vidal’s decision is “word from the top” that the practice of simply “parroting” a petition’s arguments in the expert declaration is strongly disfavored and unlikely to carry the day on invalidity.

    Petitioners sought inter partes review of U.S. Patent No. 10,360,567, owned by Bytemark, Inc.  The claimed invention is directed to an electronic ticketing system that identifies ticket fraud and, accordingly, blocks the user account associated with such fraud by setting a data value in the user account.  Claim 1 recites, in relevant part, “determine the occurrence of fraudulent activity associated with the user account … and store in a data record associated with the user account a data value indicating the fraudulent activity.”  A prior art reference Petitioners relied on (Terrell) teaches that a ticket purchaser can be blocked from further use of the ticketing system after fraudulent activity is detected.  The Board concluded that Terrell discloses blocking a user; however, the Board also concluded that Terrell does not explicitly disclose blocking a “user account” or doing so in the manner claimed.  Petitioners argued that Terrell’s disclosure of blocking a user “would require recording the blocking in a data record associated with that user’s account” and further, that a POSITA would have found it obvious to block a user in the manner claimed.  The expert declaration that Petitioner cited for those two arguments simply restated those arguments without additional supporting evidence or reasoning.  The Board denied institution because the only support for those assertions was the expert’s declaration, which was entitled to little weight because it “merely repeats, verbatim, the conclusory assertion for which it is offered to support.”

    Director Vidal affirmed the Board’s decision and designated it precedential.  In her words:  “The declaration does not provide any technical detail, explanation, or statement supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.  Instead, the declaration copies, word-for-word, Petitioner’s conclusory assertions.  The declaration sets forth Petitioner’s conclusory assertions as though they are facts, rather than setting forth facts and evidence in support of Petitioner’s assertions.”  Thus, Director Vidal agreed with the Board that the declaration was conclusory and unsupported, added little to the Petitioner’s conclusory assertions, and was entitled to little weight.