By Stephanie Mishaga and Matt Johnson

In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings.  The panelists stressed that well-prepared experts can help a proceeding.  But on the flip side, an ill-prepared or evasive expert can damage it.  After providing a quick overview of the relevant rules and regulations relating to experts, the panelists dove into discussing hypothetical proceeding situations.  A number of takeaways came out of that discussion, that both Patent Owners and Petitioners may want to keep in mind.  The PTAB judges suggested that parties be mindful of (1) carefully defining the level of ordinary skill in the art to ensure that an expert is qualified to opine, (2) not using expert testimony to fill in gaps of prior art, and (3) using expert testimony from another proceeding as it may not be new testimony subject to routine discovery rules.

The hypotheticals discussed by the panelists were fictious, but provided insight into relevant issues before the PTAB.  For each hypothetical, a fact pattern relating to pending motion(s) before the Board was presented.  A possible ruling on the motion(s) was also presented in the form of multiple choice options (e.g., options A, B, C, and D).  Webinar viewers were interactively polled on their opinion of the “best” option for a Board ruling.  The panelists also opined on the potential rulings.  A brief summary of the hypotheticals, panelist opinions, and webinar poll results are below.  Full details on the hypothetical fact patterns and ruling options can be found in the PTAB webinar slides.

Expert Qualifications – Hypothetical No. 1

In hypothetical no. 1, a Petitioner’s expert had experience in “industry designing audio sound systems for automobiles,” but the challenged patent claims related to “audio sound systems for the home.”  The Board considered rulings on two motions: (1) Patent Owner motion to exclude expert testimony based on the expert’s experience in a different field from the patent and (2) Petitioner’s motion to submit supplemental information establishing relevance of the expert’s experience.  A majority of webinar viewers felt that the Board should go with option B, granting the Petitioner’s motion to submit supplemental information, but provide additional discovery so that the Patent Owner could challenge that supplemental information.  The panelists discussed how the level of skill is defined for a person of ordinary skill in the art matters and whether there is anything unique about “audio sound systems for the home” that may require a more qualified expert.

Content and form of the supplemental information was also discussed by the panelists.  From a content perspective, the panelists considered what the supplemental information would look like.  Would it include evidence of additional qualifications? Evidence that the science or engineering principles are the same in both fields? Evidence that the design implementation in different situations does not matter?  Turning to form, the panelists discussed the form of the supplemental information.  Would it be in the form of a declaration?  Or in the form of documents authored by the expert?

In considering the remaining ruling options, the consensus from the panelists was that exclusion remedy discussed in options A and C is an extreme measure not often exercised by the Board.  The takeaway from this hypothetical is to pay attention to how the level of ordinary skill in the art is defined.  While this is often not challenged, a challenge like the one laid out in this hypothetical is possible and may be avoided by a clear and concise definition.

Expert Declarations from Other Proceedings – Hypothetical No. 2

In hypothetical no. 2, the Petitioner submitted a copy of an expert declaration from another proceeding.  The Patent Owner moved to compel production of that expert or in the alternative requested that the declaration be struck.  Most webinar viewers felt that the Board should deny the Patent Owner’s motion to compel, but caution the Petitioner that the declaration may not be admissible without cross-examination of the expert (option B).  Similar to hypothetical no. 1, the panelist consensus was that striking of a declaration is an extreme remedy that is not often taken.

In discussing the Board ruling, panelists opined on the admissibility of such declaration and potential hearsay challenges.  The takeaway from this hypothetical is that use of an expert declaration from another proceeding may fall outside of the routine rules on discovery and the submitting party should have a plan to address any potential admissibility challenges.

Petitioner Submits Expert Declaration & Patent Owner Does Not – Hypothetical no. 3

In this hypothetical, the panelists discussed how the Board should handle its final written decision when a Petitioner submits an expert declaration in support of its obviousness challenge and the Patent Owner does not present expert testimony to support its opposition.  Most webinar viewers and panelists agreed that the Board should weigh the evidence as outlined in options B and C.  But the webinar viewers and panelists differed on whether the Board should discuss the Patent Owner’s lack of expert testimony.  The panelists opined that the burden of obviousness lies with the Petitioner and if the Patent Owner chooses not to submit expert testimony, the Board should not read into that.  The panelists also considered whether a party’s status as pro se should matter in this hypothetical.  Option A of entering judgement for Petitioner on the basis that the Patent Owner did not rebut Petitioner’s expert testimony was unpopular amongst the panelists and webinar viewers.  But this option has been discussed by some to be a viable option for institution decisions, and could arguably apply to final written decisions as well.

Reliance on Opponent’s Expert Cross-Examination of Expert – Hypothetical No. 4

In hypothetical no. 4, the panelists discussed a Patent Owner’s motion to strike Petitioner’s reliance on cross-examination testimony of Petitioner’s expert by Patent Owner.  A majority of webinar viewers and panelists felt that the Board should deny the motion as Patent Owner’s cross-examination of Petitioner’s expert is part of the record (option B).  The panelists discussed the importance of preserving objections during questioning, but noted that if cross-examination testimony is admissible, it is part of the record and can be relied upon absent objections to strike.

Expert Substitution Post-Institution – Hypothetical No. 5

In a final hypothetical no. 5, the panelists briefly discussed how to rule on a Petitioner’s motion to designate a substitute expert, post-institution, that would adopt the testimony of the withdrawing expert.  The withdrawing expert declined to provide an excuse for the withdrawal.  A majority of webinar viewers chose option C – granting of Petitioner’s motion conditioned on the substitute expert being available for cross-examination by the Patent Owner.  The panelists waivered on whether it was important to know the reason for withdrawal, but suggested one alternative to remedy this concern is to have the expert state that the reason for withdrawal is unrelated to the opinion rendered in the proceeding.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.