How does the USPTO view opinion testimony in patent interference cases?
The USPTO’s view on opinion testimony in patent interference cases has evolved over time. The MPEP 716.09 references a significant case that reexamined this issue:
Glaser v. Strickland, 220 USPQ 446 (Bd. Pat. Int. 1983) which reexamines the rationale on which In re Oppenauer was based in light of the Federal Rules of Evidence.
The Board in this case provided the following guidance:
Opinion testimony which merely purports to state that a claim or count, is ‘disclosed’ in an application involved in an interference . . . should not be given any weight. Opinion testimony which purports to state that a particular feature or limitation of a claim or count is disclosed in an application involved in an interference and which explains the underlying factual basis for the opinion may be helpful and can be admitted. The weight to which the latter testimony may be entitled must be evaluated strictly on a case-by-case basis.
This means that while blanket statements about disclosure are not given weight, specific and well-supported opinions about particular features or limitations can be considered. However, the weight given to such testimony is determined on a case-by-case basis.
To learn more: