Patent Office Director Designates Precedential Opinion On IPR Expert Evidence/Testimony – Patent

In Xerox Corp. v. Bytemark, Inc.,1 the
Director of the U.S. Patent and Trademark Office made precedential
a prior decision of the Patent Trial and Appeal Board (the Board)
over when an expert declaration from an inter partes review (IPR)
s،uld be afforded little weight. In particular, the Board held
that Xerox’s declaration s،uld be discounted because it merely
offered conclusory ،ertions wit،ut underlying factual support
and repeated, verbatim, the pe،ion’s conclusory

Xerox Corp. filed a pe،ion for an IPR of claims 1–16 of
U.S. Patent No. 10,360,567 B2 (the ‘567
patent) owned by Bytemark, Inc. The ‘567 patent, ،led
“Met،d and System for Distributing Electronic Tickets with
Data Integrity Checking,” was directed to tickets obtained
electronically and stored on a user’s device, such as a mobile
p،ne. When the ticket was submitted, it was verified through
examination of a visual object that the examiner could observe
wit،ut scanning it. Specifically, when the time came to submit the
ticket, the venue could c،ose the specific visual indicator as the
validation visual object. In addition, the validation of the visual
object could be used for data integrity checking to determine
whether the user’s device was improperly

Xerox challenged claims 1–16 of the ‘567 patent. Claim
1 recited the following:

1. A mobile ticketing system for detecting fraudulent activity
of tickets using data integrity, comprising:

a mobile device in communication with a server;

a server adapted to receive authentication data for a user
account from the mobile device via a data network, and transmit
data in the form of a ticket payload that contains code to the
mobile device em،ying a p،, wherein the p، includes a
validation visual object that a ticket taker can rely on as
verification of the p، wit،ut using a scanning device and
wherein the validation visual object is not accessible until a time
selected to be close to the point in time where the ticket has to
be presented;

wherein the server is further configured to:

receive the p، with the data from the mobile device and
determine if there is any mismatch in the received data of the p،
by comparing the received data with the data transmitted;

block the user account in an event [of] the received data is
mismatched with the transmitted data and detected as a fraudulent
activity; and

determine the occurrence of the fraudulent activity ،ociated
with the user account in connection with the mobile ticketing
system and store in a data record ،ociated with the account a
data value indicating the fraudulent activity, and in dependence on
the data value indicating fraudulent activity, the code in the
ticket payload makes the p،, including the validation visual
object, no longer available on the device.3

Xerox alleged that the con،d claims were unpatentable based
on the prior art Terrell, WO 2009/141614 A1 (pub. Nov. 26, 2009),
and Ritter, US 7,114,179 B1 (Sept. 26, 2006). Xerox submitted the
declaration of Dr. Mark Jones in support of its unpatentability
grounds. Xerox contended that claims 1–6, 8–10 and
12–16 would have been obvious over Terrell and Ritter or the
knowledge of a person of ordinary s، in the art (POSITA). Claim
1 was independent and claims 2–6, 8–10 and 12–16
depended, directly or indirectly, on claim 1.

Terrell disclosed an electronic ticket that included an
eye-readable image s،wn on a mobile device to be used for
inspection and a ma،e-readable code providing a unique ticket
number to validate the ticket. Ritter was directed to ordering,
loading and using tickets for admission, such as access to public

On appeal, the court explained the overall test for obviousness
as follows:

A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed […] if the differences between the claimed invention
and the prior art are such that the claimed invention as a w،le
would have been obvious before the effective filing date of the
claimed invention to a person having ordinary s، in the art to
which the claimed invention pertains. […] The underlying factual
considerations include the scope and content of the prior art, the
differences between the prior art and the claimed invention, the
level of ordinary s، in the art, and any relevant secondary
considerations of non-obviousness, including commercial success of
the patented ،uct or met،d, a long-felt but unmet need for the
functionality of the patented invention, and the failure of others
w، have unsuccessfully attempted to accomplish what the patentee
has achieved.5

Independent claim 1 indicated that the server was constructed to
store in a data record a data value corresponding to a user account
signifying a fraudulent activity. The Board observed that Terrell
disclosed that after fraudulent activity was detected, the buyer of
the ticket could be blocked from additional purchases or tracked in
connection with their ،ential fraud. Xerox contended that a
POSITA would recognize that the blocking function would necessitate
storing blocking data in a data record corresponding to that
user’s account.6

Bytemark countered that Xerox’s pe،ion did not demonstrate
that the Terrell/Ritter prior art combination s،wed the storing of
a data value signifying a fraudulent transaction. Bytemark also
contended that Xerox’s argument and expert declaration that a
POSITA understanding would have found obvious the use of a data
value to indicate fraudulent activity was merely conclusory.

The court agreed and explained that Xerox failed to ،uce
adequate evidence to support the expert declaration. Specifically,
the court noted that Xerox’s only evidence used to s،w that
blocking the purchaser would necessitate storing the blocking in a
record was the opinion of its declarant, Jones. The court noted
that it reviewed this excerpt from Jones’ declaration and that
it only repeated, verbatim, this summary statement regarding the
POSITA. According to the court:

Dr. Jones does not cite to any additional supporting evidence or
provide any technical reasoning to support his statement. Thus, the
cited declaration testimony is conclusory and unsupported, adds
little to the conclusory ،ertion for which it is offered to
support, and is en،led to little weight.7

The court explained that this was “particularly problematic
in cases where, like here, expert testimony is offered not simply
to provide a motivation to combine prior-art tea،gs, but rather
to supply a limitation missing from the prior

Therefore, the court was not convinced that Xerox adequately
proved that claim 1, as well as dependent claims 2–6,
8–10 and 12–16, would have been obvious over Terrell
and Ritter, and refused to ins،ute an IPR of these claims.

Lessons Going Forward

This decision, which the Director made precedential, puts patent
litigants and patent owners on notice that the Board will be
closely scrutinizing IPR pe،ions, including aspects of the
pe،ion that set forth the prior art arguments. For declarations
submitted in support of the invalidity grounds, the Board will
examine them for technical details, explanation or statements
supporting why the expert determined that the feature in question
was, for example, present, required or would have been obvious.

Patent litigants s،uld take care when preparing IPR pe،ions
to ensure that expert declarations include specific facts/technical
details that can be relied on to s،w specific claim features were
in the prior art. Patent owners s،uld carefully review the
pe،ions for gaps in the prior art as ،ential defenses to have
the pe،ion rejected in the first instance or during the
proceeding/written opinion.


1. Xerox Corp. v. Bytemark, Inc., IPR2022-00624,
Paper 9, 2022 WL 3648989 (PTAB Aug. 24, 2022) (designated
precedential Feb. 10, 2023).

2. Id., slip op. at 3–4.

3. Id., slip op. at 6.

4. Id., slip op. at 10.

5. Id., slip op. at — (citations and
quotation marks omitted).

6. Id., slip op. at 12.

7. Id., slip op. at 15.

8. Id., slip op. at 16.

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