Many inter partes review (IPR) petitions rely on expert declarations in support of their challenge, filed with the petition. Expert declarations are used for several purposes–to provide a construction of critical claim terms, explain how persons of ordinary skill in the art would understand prior art references, identify features that are necessarily present in prior art references, and support a prima facie case of obviousness by providing motivations for combining or modifying references and indicia of non-obviousness.
The decision to include an expert declaration is one that is not to be taken lightly. Expert involvement in IPR proceedings is costly and can significantly increase the cost of filing an IPR challenge without a guarantee that the patent board will initiate a review. For straightforward technologies, an expert declaration may not be needed to explain the technology or provide a rationale to combine the references. In addition, many petitioners rely on the same expert in IPR proceedings and parallel district court actions. Positions taken by the expert in the IPR proceedings may limit the expert's opinions in the district court action. Because of these issues, some petitioners elect not to rely on an expert declaration at the time of filing–even when obviousness challenges are present.
Recent Federal Circuit decisions provide guidance to petitioners and identify when and how a petitioner may rely on an expert declaration filed after a review is instituted.
In Belden Inc. v. Berk-Tek LLC, Nos. 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015), the Federal Circuit upheld the use of the petitioner's expert declaration submitted on reply after institution and after the Patent Owner's Response. Patent Owner Belden moved to exclude the declaration, arguing that the declaration violated regulations governing evidence submitted on reply. Belden additionally argued that Petitioner Berk-Tek sandbagged Belden without an opportunity to respond. The Federal Circuit rejected Belden's arguments, but limited use of the new evidence to reply evidence–that which "fairly responds" to the Patent Owner's expert declaration. The Court also ensured that the expert declaration was not necessary to supply a prima facie case of obviousness. Here, the Court relied on the fact that the prior art itself provided reasons to combine the references. The Court found that the expert declaration was not necessary to supply a prima facie case of obviousness despite the Board citing to the expert declaration in its final written decision for the prima facie case. While not articulated by the Court, the Court appeared to base its decision in part because the technology and claims at issue were straightforward–a method of producing cables using a die. Lastly, the Court pointed out that the Patent Owner had several opportunities to respond including through a request for a sur-reply and cross-examination of the expert.
Conversely, in Redline Detection, LLC v. Star Environtech, Inc., No. 2015-1047 (Fed. Cir. Dec. 31, 2015), the Petitioner's expert declaration submitted after institution was excluded. One month after the institution decision, Petitioner Redline Detection moved to submit an expert declaration as supplemental evidence under 37 CFR 42.123(a). The Board denied the Petitioner's request and the Federal Circuit affirmed. The Court cautioned that such requests are not a routine avenue to pursue and are not automatically granted. The Court noted that Redline had the burden of establishing that it is entitled to the requested relief, but had not done so. Redline did not justify why the declaration was submitted after the petition and could not have been submitted with the petition. Instead, Redline admitted that the move was a cost savings measure. In addition, the Court agreed with the Board that the evidence was more than just supplemental information and was used to support Redline's prima facie case. As such, the evidence should have been submitted at the time the petition was filed.
These cases illustrate that expert testimony on behalf of the Petitioner may be presented after institution of a review, but should be approached with caution. Waiting to submit expert testimony until after the petition is granted exposes the Petitioner to a substantial risk that the evidence will be excluded or severely limited.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
