Takeaway:  Expert testimony that does not provide the underlying facts or data upon which the opinion is based is entitled to little or no weight under 37 C.F.R. § 42.65(a).

In its Decision, the Board denied institution of inter partes review of claims 1, 2, 4-15, 23-26, 28-31, 35-41, 50, 57, 62, 64-67, and 70-72 of the ’827 patent.

Petitioner challenged claims 1, 2, 4-15, 23-26, 28-31, 35-41, 50, 57, 62, 64-67, and 70-72 as anticipated under 35 U.S.C. § 102(b) by Gogek. Petitioner alleged that Gogek inherently teaches the subject matter of independent claim 1 based on experiments undertaken by Dr. Leed and Dr. Vickers, under the supervision of Dr. Hireskorn.

The Board noted that Petitioner did not use asbestos fines in its experiments whereas Gogek in Example 3 describes a refractory block made from, inter alia, asbestos fines. Dr. Hireskorn asserted that asbestos is no longer commercially available in the U.S. and that the use of Superwool 607 as a substitute “would not materially alter the physical properties of the insulating block or the amounts of residual ionic species of sulfates, phosphates, nitrates, carbonates, and combinations thereof that are assessed in a leach test.”

The Board stated that there was no prior art or other literature provided by Petitioner in support of Dr. Hireskorn’s statement. Dr. Hireskorn also does not provide a basis for his opinion. The Board stated that expert testimony that does not provide the underlying facts or data upon which the opinion is based is entitled to little or no weight under 37 C.F.R. § 42.65(a). Petitioner argued that the Board should not doubt Dr. Hireskorn’s opinion at this preliminary stage. However, the Board stated that a “lack of credible support is no justification to put a patent owner to the expense of defending an inter partes review trial.” Thus, the Board concluded that Petitioner had not established a reasonable likelihood that it will prevail with respect to any of the challenged claims.

JOHNS MANVILLE CORPORATION v. KNAUF INSULATION, INC., IPR2015-01633
Paper 10: Decision Declining to Institute Inter Partes Review
Dated: January 4, 2016
Patents: 9,039,827
Before: Fred E. McKelvey, James T. Moore, and Kristina M. Kalan
Written by: McKelvey
Related proceedings:  Knauf Insulation, LLC v. Johns Manville Corp., Civil Action No. 1:15-cv-00111-WTL-MJD (S.D. Ind. filed Jan. 27, 2015); IPR2015-01673; IPR2015-01683