Takeaway: A lack of expert testimony in support of the Petition is not dispositive; citations to the disclosure of the prior art constitute evidence that may be sufficient to prove unpatentability.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Final Written Decision holding claims 1-11 of the ‘766 patent unpatentable. Patent Owner sought reconsideration of the final decision on the following grounds:  “1. Petitioner failed to meet its burden of proof because it offered no expert testimony; and 2. 3494 GSP does not anticipate claims 10 and 11 because it does not disclose the ‘sending’ steps of claim 10.”

The Board noted that the burden lies with the moving party, and that the “request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.”

Turning to the first ground in the request, Patent Owner argued that Petitioner failed to offer any expert testimony, and Patent Owner’s expert testimony was unrebutted. However, the Board noted that Patent Owner did not “identify any particular limitations for which it believes expert testimony was necessary to explain the disclosure of [the prior art].”  The Board stated that “Patent Owner argues, in effect, that the preponderance standard can never be met without expert testimony.”  The Board disagreed, holding that “lack of expert testimony in support of the Petition is not dispositive.”  In this regard, the Board was persuaded that Petitioner’s citations to the prior art were sufficient without the need to resort to expert testimony.  Although agreeing with Patent Owner that “arguments of counsel cannot take the place of evidence,” the Board went on to note that “Patent Owner does not appreciate that the disclosure of 3494 is itself evidence and we were not persuaded by Patent Owner’s expert witness testimony with respect to that evidence.”  Thus, the Board was not persuaded that it had overlooked or misapprehended the lack of expert testimony.

With respect to Patent Owner’s arguments related to the disclosure of the prior art, the Board initially noted that Patent Owner devoted three and a half pages to this argument in its Request for Rehearing, but was only found in one conclusory sentence in its Response. Because Patent Owner “offered no analysis or evidence to support this assertion,” the Board held it could not have misapprehended or overlooked it.

Spectra Logic Corporation v. Overland Storage, Inc., IPR2013-00357
Paper 28: Decision on Request for Rehearing
Dated: January 8, 2015
Patent: 6,328,766 B1
Before: Kevin F. Turner, James A. Tartal, and Matthew R. Clements
Written by: Clements