C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart A—Trial Practice and Procedure

37 C.F.R. § 42.65

Expert testimony; tests and data

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(a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Testimony on United States patent law or patent examination practice will not be admitted.

(b) If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining:

(1) Why the test or data is being used;

(2) How the test was performed and the data was generated;

(3) How the data is used to determine a value;

(4) How the test is regarded in the relevant art; and

(5) Any other information necessary for the Board to evaluate the test and data.

Notes of Decisions
Cited in 5 cases (3 in the last 5 years), 2017–2024 · leading case: Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc.
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Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc. (2018) cafc · cites it 8× “1112–15, and contended that the tests Altaire per- formed on Lots #11578 and #11581 do not satisfy the requirements of 37 C.F.R. § 42.65 (b) (2016), see J.A. 1115– 2 While the record refers to the President of Altaire as both “Al Sawaya” and “Assad Sawaya,” we refer to him as…”
Skky, Inc. v. Mindgeek, S.A.R.L. (2017) cafc “2017) (concluding that the Board properly gave little weight to con-clusory expert testimony of objective indi-cia); 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”
University of Strathclyde v. Clear-Vu Lighting LLC (2021) cafc “See Final Decision, 2020 WL 3848045 , at *18 (citing 37 C.F.R. § 42.65 (a)). We disagree. In his declaration, Dr.”
L'Oreal USA, Inc. v. Olaplex, Inc. (2021) cafc “59–61 1 Olaplex argues that when the Board admitted the laboratory notebook and related evidence establishing that fact, it violated 37 C.F.R. § 42.65 (b), which requires an ex- planatory affidavit in certain circumstances—specifically, when a party “relies on a technical test…”
Irobot Corporation v. Sharkninja Operating LLC (2024) cafc “37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opin- ion is based is entitled to little or no weight.”
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