Expert testimony can be critical to support or defend against invalidity challenges in AIA trials, but must be adequately explained to be effective. In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Feb. 10, 2023), Director Vidal affirmed and designated as precedential a decision from the Patent Trial and Appeal Board (PTAB) that gave “little weight” to expert testimony which “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” signaling that the PTAB may further scrutinize the adequacy of expert declarations. Id. at 3-5 (bold added). As Director Vidal explained, the expert testimony at issue was insufficient to show that the prior art disclosed or suggested a claimed feature because the testimony only “copie[d], word-for-word, Petitioner’s conclusory assertions” and did “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.” Id. at 5.
Xerox highlights that if a position taken in a brief requires explanation, the expert testimony should expound on, rather than merely repeat, that position. Expert testimony that fails to do so is at risk of being given little weight.
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