For PTAB Declarations, Better to Fly Solo

Posted by John Strand on Jan 22, 2018

Many things in life are better done with someone else: board games, dinner parties, road trips, riding tandem bicycles. However, according to the PTAB, there’s one particular area where it’s best to fly solo: two people should not provide one declaration in an IPR. In CSL Behring GMBH v. Shire Viropharma Inc. (IPR2017-01512), the PTAB denied institution in large part because the petitioner submitted a joint declaration to support that one of its references was a printed publication.

The declaration was signed by two individuals, one doctor and one “Director of Medical Affairs,” both of whom attended a 2012 conference. They jointly declared that the conference was attended by “nearly 5,000 physicians,” that the reference poster at issue was displayed, that the authors were present to answer questions about the reference, that an abstract was published prior to the meeting, and that handouts of the reference were available at the conference. These facts fairly track those of In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), which affirmed a finding that a poster at a conference was a “printed publication.”

The Board, however, rejected the joint declaration, finding it “obscures the precise nature and origin of a number of factual assertions to such an extent that it fails to demonstrate” that the reference was distributed at all. The PTAB particularly faulted the declaration because the declarants stated that certain events occurred in “our recollection.” The Board found it “unclear how two different declarants can have the same ‘recollection.’” It was also unclear to the Board “if both declarants were together when the handout was picked-up, or if each declarant picked up the handout at separate times.” 

The Board ended up giving the declaration “little weight,” found that the petitioner did not meet its burden to show the poster was a printed publication, and denied institution of the IPR.

Takeaways

Although we’ve stated elsewhere that petitioners should treat seriously the requirement of showing a printed publication was actually published, using a joint declaration to do so in this case failed. Here, there may have been some expediency that was met by using one declaration for two individuals, but the petitioner was ultimately unsuccessful. So the takeaway here is easy: don’t submit joint declarations to the PTAB if you can avoid it.

Topics: Printed Publications

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