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[patentatt]

1. When you have multiple declarants signing written testimony in response to an Office Action rejection - do you have the decs look substantially identical?  In other words, in response to an argument, you want experts to swear to facts X, Y, and Z, and then cite their three decs as support for X, Y, and Z in your arguments - do you make their decs look substantially the same in supporting facts X, Y, and Z?  Or do you have different declarants swear to substantially different things, and then mix them together in your response?

I can see advantages/disadvantages to both approaches.  If they look the same, they look canned and cookie-cutter, and not original to the declarant.  But if they are same, then the exact same facts are reinforced by clear support from multiple experts.

2. Can you use declarant evidence to fill in gaps in documents and other evidence.  For example, suppose that you have business receipts and documents showing sales details for the last two years.  The documents by themselves don't clearly show a nexus to your claimed invention.  Can you simply have some declarants, like the CEO or other disinterested parties, swear that they believe the increased sales are due to the feature of the exact claim language?  Or is this a losing argument?

[Robert K S]

Any difference between the decs is an angle of attack for a litigant seeking invalidation.  You'd be crazy not to do cookie-cutter.  There's no expectation that declarants write these things themselves--only that the facts they swear to are true and that they have personal knowledge of those facts.  My answer to 2 is yes (to its first sentence).

[bleedingpen]

Don't file multiple decs that all say the same thing- just file one. 

[patentatt]

Don't file multiple decs that all say the same thing- just file one. 

That can't be right.  10 different, independent experts asserting X is better than just one.

[bleedingpen]

Don't file multiple decs that all say the same thing- just file one. 

That can't be right.  10 different, independent experts asserting X is better than just one.

That means 10 different, independent experts get to be deposed in litigation and if just one of them screws up, bam there goes inequitable conduct charges or other patent invalidating assertions. 

[patentatt]

Don't file multiple decs that all say the same thing- just file one. 

That can't be right.  10 different, independent experts asserting X is better than just one.

That means 10 different, independent experts get to be deposed in litigation and if just one of them screws up, bam there goes inequitable conduct charges or other patent invalidating assertions. 

10 is an exaggeration - I'm guessing that three or four is the sweet spot.

You're right that there is tiny risk of problems during litigation.  The risk must be balanced with the benefits during prosecution.

Remember, <1% of patents ever go to trial.

Can't depose someone in reexam.

[bleedingpen]

Don't file multiple decs that all say the same thing- just file one. 

That can't be right.  10 different, independent experts asserting X is better than just one.

That means 10 different, independent experts get to be deposed in litigation and if just one of them screws up, bam there goes inequitable conduct charges or other patent invalidating assertions. 

10 is an exaggeration - I'm guessing that three or four is the sweet spot.

You're right that there is tiny risk of problems during litigation.  The risk must be balanced with the benefits during prosecution.

Remember, <1% of patents ever go to trial.

Can't depose someone in reexam.

It is not a tiny risk.  If there is a 132 dec in the prosecution history of a patent application, it it much more likely than not that the declarant will be deposed.  The standards applied by the courts to declarations are downright absurd. 

[Dazed-n-confused]

It is not a tiny risk.  If there is a 132 dec in the prosecution history of a patent application, it it much more likely than not that the declarant will be deposed.  The standards applied by the courts to declarations are downright absurd. 

Pick old declarants/experts.  Graveyard depos are verboten under FRCP 12345.

[NJ Patent1]

Patentatt:  in Q1 you wrote "facts".  IMO one dec should suffice if only facts are involved.  If "opinions" are involved (e.g. nexus btw market success and the claimed features); more than one dec may be OK, or even desirable.  I agree with the above caveats re: deposition fodder. But if you are down to arguing "acceptance in the market", etc. you're already in a fight for your life - at least in my experience (I'm in two right now).  Concerning Q2, I doubt that the CEO of the assignee is "disinterested".  IMO such a dec woud be "self-serving non-crossexamined testimony" 

[patentatt]

Patentatt:  in Q1 you wrote "facts".  IMO one dec should suffice if only facts are involved.  If "opinions" are involved (e.g. nexus btw market success and the claimed features); more than one dec may be OK, or even desirable.

I hadn't even thought of this before - is there any patent case law on this distinction regarding 1.132 decs?

But if you are down to arguing "acceptance in the market", etc. you're already in a fight for your life - at least in my experience (I'm in two right now).

We're arguing it as a luxury and not a necessity.

Concerning Q2, I doubt that the CEO of the assignee is "disinterested".  IMO such a dec woud be "self-serving non-crossexamined testimony"

Of course, I agree.  I didn't mean for my wording to imply otherwise.

IMO such a dec woud be "self-serving non-crossexamined testimony

That's the beauty of all 132 decs.