Petitions for inter partes review often pursue invalidity under 35 U.S.C. § 103 (obviousness). Often the petitioners incorporate declarations from well-qualified experts who purport to show how a combination of certain references renders the challenged claims obvious. However, the use of an expert declaration is not a guarantee that a petition will be deemed reasonably likely to succeed in invalidating at least one of the challenged claims. Why? Petitioners frequently rely on declarants that offer nothing more than conclusory statements and fail to offer any convincing rationale for why one of skill in the art should combine references. 

Roughly a year ago, the PTAB refused to institute a trial on a Petition filed by Wowza Media Systems, LLC seeking to invalidate a patent owned by Adobe Systems Incorporated as obvious. In denying the Petition, the PTAB noted that the Petitioner (and its expert) “provides mere conclusory statements in support of the legal conclusion of obviousness” and “offers no convincing rationale, in light of the teachings of the prior art, with respect to why one of ordinary skill in the art would have [combined certain references].”  Wowza Media Systems, LLC v. Adobe Systems, Inc., IPR2013-0054 (TLG), Paper No. 12 (April 8, 2013).

Since the decision in Wowza Media Systems, LLC, conclusory declarations have continued to trouble petitioners. Last week, Toshiba failed to successfully petition for inter partes review because, in large part, it relied on a conclusory declaration. Toshiba’s expert stated:

 “[b]ased on the reasons stated in the petition, as well as my experience and knowledge, it is my opinion that claims 1, 9-10, 17-20, 22, and 24 of the ‘788 patent are rendered obvious by modifications to Bastiani if not anticipated by Bastiani.  The modifications would involve techniques already known in the prior art.” 

The Board found Toshiba’s argument to be “entirely conclusory.” Neither Toshiba, nor its expert, explain how certain prior art references would be modified our combined or detail the reasons why a person of ordinary skill in the art would have made such modifications or combinations. Toshiba v. Intellectual Ventures II LLC, IPR2014-00201, Paper 11 (May 21, 2014). See also Google v. Simpleair, Inc. Google CBM2014-00054, Paper 19 (May 13, 2014) (denying institution of covered business method patent review because petitioner merely stated “in a conclusory manner that the subject matter of the claims is obvious . . . Petitioner must explain, for example, the scope and content of the prior art and the differences between the prior art and the claims at issue.”). Bottom line: Make sure your Petitions—and expert declarants—explain why one of skill in the art would combine certain references if you want to successfully petition the PTAB to institute review of a patent on § 103 grounds.