The use of expert testimony in inter partes review proceedings is common and may be an important tool for convincing the PTAB to grant the petition for review based on a review and analysis of the cited prior art. 

Experts may generally be considered “one skilled in the art” and as such, their declarations may have an impact on the PTAB’s ultimate decision of whether to grant the petition. In a recent decision (Petition For Inter Partes Review By Samsung Electronics Co., Ltd., IPR2014-00214), the PTAB denied Petitioner’s Corrected Petition requesting inter partes review of various claims of U.S. Patent No. 8,306,993 noting that the testimony of Petitioner’s expert witness was “…conclusory and unsupported by the record evidence.” The Petitioner had offered expert testimony via a Declaration claiming, inter alia, that one skilled in the art would have had proper reason to combine two references and arrive at the invention as claimed in a number of the Patent Owner’s claims. 

In reviewing the expert testimony and analyzing the cited references, the PTAB gave little weight to the expert testimony as there was no factual basis upon which it relied. The PTAB did not go into specific detail on what why it believed that the testimony was conclusory and unsupported by the record evidence, but one can imagine that the PTAB in future proceedings will be closely scrutinizing expert testimony that claims to show that a combination of references is obvious. Presumably, it would be best to tie any expert testimony to facts on the record and in the prior art and support any conclusions reached with these facts as well as any other extrinsic evidence. Simply providing so-called “expert testimony” on the issue of obviousness may not be enough to persuade the PTAB to grant a Petitioner’s petition going forward.