Federal Circuit Upholds PTAB’s Rule Against Incorporation and Rejects Expert Testimony

In a nonprecedential opinion issued on June 25, 2021, the Federal Circuit upheld the PTAB’s rule against incorporation of evidence by reference. 3M Company v. Evergreen Adhesives, Inc., No. 2020-1738 (Fed. Cir. June 25, 2021). 3M filed an IPR against Evergreen Adhesives Inc. (formerly Westech Aerosol Corp.), asserting that its aerosol adhesive patent was invalid for obviousness. Although the Board agreed that several of the claims were obvious, the Board upheld two of the twenty-six claims and rejected 3M’s request for a rehearing. 3M appealed to the Federal Circuit, arguing that the Board erred by excluding the evidence offered by its expert.

On appeal, the Federal Circuit found no error in the Board’s determination that 3M’s invalidity argument was improperly advanced because the argument was only raised in reference to an expert declaration. Specifically, 3M’s arguments failed because their reference to expert testimony was “an attempt to introduce argument by citation” under 37 CFR § 42.6(a)(3), which states that “arguments must not be incorporated by reference from one document into another document.”

In upholding the Board’s ruling, the Federal Circuit cited the PTAB’s concerns over abuse and judicial efficiency if arguments were permitted to be incorporated by reference, stating that the PTAB shouldn’t be “forced to ‘play archeologist with the record.’” For expert testimony to be properly considered by the Board, the expert declaration must support clear arguments already advanced in the petition. Here, the relevant contention was never made in the petition, so the argument was improperly raised in the expert declaration.

Expert testimony may only be cited as support for an already advanced argument.  Expert testimony alone is insufficient to make a “contention.” Without a valid contention to support, expert testimony may violate the rule against incorporation. As this ruling shows, ANDA filers will need to be cautious when drafting IPR papers to ensure that all requisite arguments are explicitly advanced in the petition or brief itself or risk an unfavorable PTAB decision.

Thanks to Katherine Chen, law student at the University of Minnesota Law School, for her contributions to this post.