Another case being argued next week involves Intellectual Ventures I LLC (“IV”) and EMC Corp. (“EMC”). This case present the issue of whether, during an inter partes review (“IPR”), the Patent Trial and Appeal Board (“PTAB”) may premise its obviousness finding on expert testimony that represents gap-filling.
Byron Pickard of Sterne Kessler Goldstein & Fox, PLLC will argue on behalf of IV. He raises the question of what the PTAB may use to form the basis of an obviousness finding in an IPR. Highlighting the importance of the issue, IV’s opening brief suggests that the PTAB used conclusory expert testimony “to fill in no fewer than four limitations missing from OceanStore’s disclosure,” which is beyond the permissible “simple” and “particularly straightforward” limitation supported by “evidence and a reasoned explanation” allowed by the PTAB.
Cynthia Vreeland of Wilmer Cutler Pickering Hale and Dorr LLP will argue on behalf of EMC. EMC’s brief argues that IV’s “gap filling” argument is “inconsistent with the record.” EMC asserts that each of the four “missing” limitations was “either expressly disclosed by OceanStore, or at least taught or suggested by OceanStore.”
In reply, IV takes the position that “EMC misunderstands the applicable legal standard” because the PTAB “must support its gap-filling with ‘evidence and a reasoned explanation.’” Further, IV asserts that the PTAB “should not be permitted to fill in gaps based on conclusory expert testimony any more than it should be permitted to do so based on invocations of ‘common sense.’”