Legalese in Expert Declarations? . . . OK With Factual Findings!

For many patent practitioners, using expert declarations under 37 C.F.R. § 1.132 to rebut an obviousness rejection under 35 U.S.C. § 103, has become almost the norm, rather than a unique occurrence. Having an inventor or other technical expert opine on some aspect of the claims, prior art, or unexpected result or property of the invention, is often the only way to convince an Examiner that one or more of the long list of “Exemplary Rationales” under KSR ¹ can be rebutted. ²

However, writing such declarations, without the use of legal conclusions or legal terminology, is often very difficult and cumbersome. When trying to argue that an invention “would not have been obvious” or that prior art “does not enable” an alleged teaching, keeping these phrases out of 132 declarations can be nearly impossible. A recent Federal Circuit decision has confirmed that using legal conclusions in expert declarations is acceptable, so long as they are supported by factual findings

In Icon Health & Fitness, Inc. v. Strava, Inc., 2106-1475 (Fed. Cir. February 27, 2017), two expert declarations were introduced during an inter partes reexamination of U.S. Patent No. 7,789,800 (the ‘800 patent), owned by Icon. During the reexamination, the Examiner found the ‘800 patent invalid as obvious over certain prior art references. ³ The Examiner cited a number of passages from expert declarations submitted by Strava (Mr. Koperda’s Declarations), including sections that stated that “something ‘would have been obvious’ or some variant thereof.” ⁴ The Examiner’s decision of obviousness was confirmed by the U.S. Patent & Trademark Office’s Patent Trial and Appeal Board (PTAB). Icon argued that “’[t]he principal error affecting all aspects of the reexamination proceedings is Strava’s use of an expert to supply legal conclusions of obviousness’ and the PTAB’s reliance on those conclusions.” ⁵ However, the Federal Circuit disagreed with the reliance on Mr. Koperda’s Declarations.

Specifically, the Federal Circuit noted that “there is no per se prohibition against relying on an expert’s declaration in support of factual findings underlying a legal conclusion of obviousness solely because the declaration states that something ‘would have been obvious.’” ⁶ The court also noted that PTAB determinations related to obviousness have often been affirmed, where those determinations rely on expert declarations that include such legal statements. What is necessary, however, is that “other aspects of the declarations contain statements related to factual findings.” ⁷ In addition, the court noted that “to determine if an expert’s statement is directed to factual findings or the legal conclusion of obviousness, [the court looks] to the statement not in isolation, but in the context of the whole declaration.” ⁸

While the language in an expert declaration continues to require careful consideration, it appears that asking experts to discuss legal concepts and conclusions, so long as supported by factual findings, may indeed be fair game during prosecution.