Addressing whether a petitioner’s unsupported expert testimony, unchallenged by the patent owner, is sufficient to carry an inter partes review (IPR) petition at least through the institution phase, the Patent Trial and Appeal Board (PTAB) said no and denied the IPR petition. Johns Manville Corporation v. Knauf Insulation Inc., Case No. IPR2015-01633 (PTAB, Jan. 4, 2016) (McKelvey, APJ).

The petitioner filed an IPR petition alleging that various claims of Knauf’s patent were inherently anticipated under §102(b) by a prior art patent to Gogek. The claims at issue are, in general, directed to a material comprising non-woven mineral fibers held together by a binder, wherein the material contains a certain residual level of ionic species per kilogram as assessed in a leach test. Petitioner argued that Gogek inherently taught the claimed product in one of his disclosed examples and provided expert testimony to that effect. Specifically, Petitioner’s three experts collaborated to prepare “insulated blocks” as taught in Gogek “Example 3” and then tested those blocks for residual ionic species as required by the challenged claims.

The Gogek process for making insulated blocks included use of “asbestos fines.” One of Petitioner’s experts explained that because asbestos fines are no longer commercially available (due to its carcinogenic properties) “Superwool 607,” which is a form of glass wool, was used instead. Petitioner’s expert stated that use of Superwool 607 was equivalent to use of asbestos fines, that use of Superwool 607 would not change the physical properties of the insulated blocks made in accordance with Example 3, and that use of Superwool 607 would not change the level of residual ionic species in the blocks as assessed by a leach test. No evidence was cited in support of these conclusory statements, nor was any analysis provided comparing Superwool 607 to the “asbestos fines” taught in Gogek. In its preliminary response, the patent owner argued that because Superwool 607 is not asbestos fines, the petitioner had not made the insulated blocks taught in Gogek. The patent owner did not, however, present evidence to dispute the expert’s claims that Superwool 607 was equivalent to asbestos fines.

The petitioner argued that the PTAB should credit its expert’s testimony at this stage in the proceedings, particularly where the patent owner did not dispute its argument that Superwool 607 was equivalent to asbestos fines. The PTAB disagreed, explaining that it was entitled to broad discretion in determining the amount of weight to be accorded witness testimony and could decide not to credit unsupported expert testimony. The PTAB stated that the patent owner “had no reason to mount a detailed challenge in its Preliminary Response given the lack of underlying support for [the petitioner’s expert’s] opinion.” Furthermore, the PTAB explained that in “IPR proceedings, it is up to the petitioner to make out its case; it is not the responsibility of a patent owner to challenge a case which has not been made.” Accordingly, the PTAB concluded that petitioner had failed to establish that, following trial on the merits, there is a reasonable likelihood that it will prevail.

Practice Note: Considering the Board decision in Knauf and the Federal Circuit decision in Redline Detection v. Star Environtech, IPR petitions containing credible evidence but no expert testimony and petitions that include expert testimony without credible supporting evidence are both likely to be found insufficient even at the institution phase. Rather, the best practice is to submit an expert declaration along with supporting evidence in an IPR petition. Parties hoping to save on costs by preparing only a bare-bones IPR petition do so at the risk of not progressing to the trial phase.