A single declaration providing joint statements of two declarants was given little weight for presenting practical difficulties for cross-examination.
In CSL Behring Gmbh v. Shire Viropharma Inc., IPR2017-01512 (PTAB Dec. 7, 2017) (Paper 12), the petitioner requested inter partes review (IPR) based on two obviousness grounds. The first ground relied upon a handout of a poster that was allegedly presented at the 2012 American Academy of Allergy, Asthma & Immunology annual meeting. To show that the handout qualified as a prior art printed publication, the petitioner submitted a single declaration in which two declarants jointly asserted that (1) the handout was presented at a meeting attended by nearly 5,000 physicians, specialists, academics, and industry representatives; (2) the poster was on display and accessible to all attendees; (3) the poster’s abstract was published prior to the 2012 meeting; and (4) handouts of the poster were freely available at the meeting.
In addressing whether the handout qualified as a prior art, the Board first noted that the petitioner is the party charged with the burden of establishing that an asserted reference constitutes a prior art printed publication. Although the petitioner offered the single declaration as evidence to satisfy this burden, the Board found that the joint testimony presented “practical difficulties” in the ability to determine the reliability of the statements made in the declaration. As an example, the Board noted that it was unclear what the declaration meant when it referred to “our recollection” of events. Accordingly, the Board gave the joint declaration little weight.
Because the joint declaration was the primary evidence on which the petitioner relied to demonstrate that the handout was a prior art printed publication, the Board concluded that the petition failed to make a threshold showing that the handout qualified as prior art to the patent at issue. The Board therefore denied institution on the first ground.
For the second ground, the Board found that the petition asserted essentially the same arguments that the examiner considered during prosecution. Accordingly, the Board exercised its discretion under 35 USC § 325(d) and denied the petition as to the second ground.