In Universal Remote Control, Inc. v. UEI Cayman Inc., IPR2014-01082, Paper 9 (December 18, 2014), the Board declined to institute inter partes review of claims 2, 5, 22, and 23 of U.S. Patent No. 7,589,642.  Petitioner argued that a claim limitation was inherent in all of the cited references.  The Board explained that “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).  The Board noted that petitioner’s only support was the conclusory declaration of its expert.  The Board said that conclusory statements that are without factual or evidentiary support are insufficient, citing 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.”). Lacking any other proof of inherency, the Board could not determine that the element was in fact inherent in the prior art, and declined to institute inter partes review.