Sunday, November 7, 2010

Overview of 1.132 expert declarations

A few weeks ago the Reexamination Alert blog ran a story (here) about a Tivo patent which survived an ex parte reexamination. (Details in PAIR, Reexam Control No. 90/009329). Though a great many reexams go to appeal, that wasn't needed here because the Examiner was persuaded by expert declarations filed in response to the final Office Action. The Reexamation Alert put it like this:
TiVo’s present success is the result of an interview with Examiners followed by two very powerful declarations. TiVo was represented at the interview by counsel, but also by TiVo co-founder and ‘389 patent co-inventor Jim Barton, as well as UCLA Professor John Villasenor. Barton’s declaration, and presumably his presentation at the interview, established a critical nexus between the substantial commercial success enjoyed by TiVo’s digital video recorder and the “automatic flow control” required by claims 31 and 61. Dr. Villasenor’s declaration detailed the technical distinctions between the ‘389 claims and the prior art, which he asserted “simply reacts to the flow and does not control it.”  Villasenor also argued that one skilled in the art would have no reason to combine the references in the manner proposed in the final rejection.

The use of expert declaration evidence is patent prosecution is a topic of particular interest to me, so I reviewed some of the file history, and in particular the declarations and responses which relied on this evidence. I've reviewed many Board decisions dealing with expert declarations, and in doing so have learned about some of the common problem areas with declarations. From what I can see, the expert declarations in this Tivo reexam skillfully handled several areas which Applicants often have trouble with.

Here's a few of the things that Tivo got right in its use of expert declarations -- along with the case authority for why I say each is "right":
  1. Most importantly, Tivo used a declaration to explain technical facts, rather than simply putting this in a response as "mere attorney argument." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)(attorney argument without factual evidence will not rebut prima facie obviousness).
  2. The declaration includes credentials and those credentials are relevant to the art. For a discussion of the relevant case law, see my post here.
  3. The declaration explains the relationship of the declarant to the assignee. Failure to do so can implicate inequitable conduct. An undisclosed business relationship between a patent applicant and a declarant is material if "(1) the declarant's views on the underlying issue are material and (2) the past relationship is a significant one." Ferring B.V. v. Barr Labs, Inc., 437 F.3d 1181, 1188 (Fed. Cir. 2006).
  4. The declaration itself gives facts and then draws technical conclusions, rather than conclusions unsupported by fact. The Board has broad discretion to accord little weight to declarations expressing an opinion as to fact when there is a lack of factual support for the opinions expressed. In re Am. Acad. of Sci. Tech. Ctr. , 367 F.3d 1359, 1368 (Fed. Cir. 2004).
  5. The declaration itself doesn't make legal conclusions. This is the proper role of attorney argument: to make a legal conclusion such as"not obvious." “An expert’s opinion on the ultimate legal conclusion is neither required nor indeed ‘evidence’ at all.” Mendenhall v. Cedarapids Inc. , 5 F.3d 1557, 1574 (Fed. Cir. 1993) (quoting Nutrition 21 v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991))

In future posts I'll discuss some of these requirements in more detail. In the meantime, you can see a few posts which touch on expert declarations by selecting the label "1.132" in the list of Labels on the right-hand side of the blog.


  1. Great post.

    It also seems to me that 132 decs do well to argue technical facts, and general nonobviousness, rather that the specific secondary considerations of nonobviousness. An example of the latter, such as commercial success, requires a showing of a "nexus," which seems almost impossible to show to an appellate court's satisfaction. The secondary considerations in Graham are riddled with holes and traps for the unwary attorney - it is better I think to avoid them and simply argue the technical facts of the references and why it the claimed invention wouldn't have been obvious (letting the attorney draw the final legal conclusions).

  2. >secondary considerations in Graham are
    >riddled with holes and traps for the unwary

    You make a great point. Whereas secondary considerations involves areas of law that patent prosecutors may not be familiar with, the arguments made in the Tivo decs are the kinds of arguments that attorneys make every day.

    So I'd say the learning curve for these sorts of expert decs -- I'm thinking motivation to combine, enablement, meaning of claim terms -- is an easy one. An attorney just needs to learn how to utilize an expert dec to help make the argument.

  3. Wonderful post, Karen! Thank you for the practical advice. Looking forward to learning more about this topic in future posts.

  4. Are 1.132 decs that speak only to technical issues and are submitted by the inventor ever successful?

  5. >Are 1.132 decs that speak only to technical
    >issues and are submitted by inventor ever

    Though I don't have any actual stats, I feel comfortable saying that 1.132 decs aren't very successful at the Board *in general*. But mostly because the dec doesn't do what it's supposed to do.

    I wrote about this a little here:

    You mentioned "by the inventor" so you might be specifically asking whether the identity of the declarant matters.

    Again, no stats, but my sense is the vast majority of 1.132 decs are provided by inventors. And the Board usually doesn't comment on that at all.

    In fact, I ran across a decision where the Board did comment on this issue, and I saved the decision because it seemed to be such an extreme position.

    In the decision I'm speaking of, the Board said:

    "As the inventor, Dr. Classen is not a disinterested party. Thus, his
    opinions are presumed to be mere arguments or conclusory statements, not
    factual evidence of non-obviousness."

    What's up with that?

    1. Thanks, I appreciate the insight.