November 29, 2021

Volume XI, Number 333

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November 29, 2021

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Patent Owner Tip #6 for Surviving an Instituted IPR: Using Objective Sources & Evidence to Support the Expert Declaration

As we have previously discussed, expert testimony is a critical aspect of the Patent Owner’s case-in-chief of an inter partes review (“IPR”) proceeding. In addition to retaining the right expert witness and maximizing that expert’s testimony in the expert declaration, it is imperative that expert testimony is supported by objective, contemporaneous documentary evidence.

We have previously written about the importance of supporting and corroborating expert opinions with the detailed reasons and documentary evidence. Pursuant to 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”  Conclusory, unsupported expert testimony can lead to outright rejection of the expert opinion. For example, in Skky, Inc. v. MindGeek s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017), the Federal Circuit affirmed the Board’s failure to credit the expert testimony of the patent owner’s expert noting, “the Board is not required to credit Skky’s expert evidence simply because Skky offered it. . . . The Board reviewed the evidence presented by the parties and chose not to credit Skky’s expert testimony.” Because expert witnesses do not testify live before PTAB judges, conclusory, unsupported expert opinions are not only entitled to little weight, but also often result in losing a “battle of the experts.”

One way to prevent a perceived “battle of the experts” is to bolster expert opinions with contemporaneous documents such as treatises, articles, and textbooks that support your expert’s opinions, claim constructions, and conclusions. Where expert opinions are supported with contemporaneous documentary evidence, PTAB judges are less likely to view the issues as one expert’s word against another’s.

However, all contemporaneous, documentary evidence is not created equal. References should be carefully reviewed and selected to ensure that the evidence properly supports the opinions and conclusions of the Patent Owner’s expert, but does not help support the Petitioner’s positions. Patent Owners who use the strategic advantage of the evidentiary last word and the benefit of a largely developed evidentiary record prior to filing its expert declaration can successfully support its expert’s opinions while effectively distinguishing the evidence cited by Petitioner’s expert.

©1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XI, Number 133
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About this Author

William A. Meunier, Mintz Levin, Patent Litigation Lawyer, Biotech Attorney
Member

Bill focuses his practice on all aspects of intellectual property litigation, with a particular emphasis on patent infringement matters and other disputes related to the enforcement of intellectual property rights. He has litigated intellectual property cases in District Courts throughout the United States, including the Eastern District of Virginia, Northern and Southern Districts of California, Eastern District of Texas, District of Massachusetts, District of Delaware, Northern District of Ohio, and Middle District of North Carolina.

With more...

617.348.1845
Courtney Herndon, intellectual property lawyer, Mintz Levin,Patent Litigation International Trade Commission Federal District Court Strategic IP Monetization & Licensing
Associate

Courtney is an Associate in the intellectual property section. Before joining Mintz Levin, Courtney clerked for Associate Justice Geraldine Hines of the Massachusetts Supreme Judicial Court and Associate Justice Vickie L. Henry of the Massachusetts Appeals Court. 

During law school, Courtney served as a judicial intern to Judge William G. Young of the United States District Court, District of Massachusetts, and to Justice Hines (then an Associate Justice of the Massachusetts Appeals Court), conducting legal research, preparing bench memoranda,...

617-348-1871
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