Although an “expert opinion” in the form of a declaration is not a mandatory part of a petition for patent review under the new AIA proceedings (i.e., inter partes review, CBM review or post-grant review), opinions of experts form an important part of the challenger’s case in many of the petitions filed to date.
There are many good reasons to make an expert “declarant” part of your team. Since the principal issue in most review proceedings will be an inquiry into level of knowledge of a “person having ordinary skill in the art,” an expert can set the table by helping define the relevant art and level of knowledge expected by such a hypothetical skilled artisan. Additionally, claim construction (the proper meaning of each limitation of the challenged claims) will typically be another important issue –and one where an expert can again bolster a petitioner’s case.
In fact, the “PTAB Trial Practice Guide” published by the PTAB states “The Board expects that most petitions and motions will rely upon affidavits of experts.” However, the trial guide also provides a warning to parties who use experts: “[o]pinions expressed without disclosing the underlying facts or data may be given little or no weight.”
A typical expert declaration at the petition stage will begin with a brief description of the experts credentials, e.g., education, experience in the field, patents and/or publications, followed by a description of the “state of the art” at the time of the patent’s effective filing date. The declaration then briefly describes the challenged patent and the prior art that petitioner is relying upon to invalidate the claims.
The final, and perhaps most important, aspect of the expert declaration is the expert’s explanation why the prior art anticipates (or renders obvious) the challenged claims. Here, the expert should use facts substantiating the knowledge of a typical person of skill in the art and data to support the petitioner’s position that it would have been reasonable (and expected) for one skilled in the art to combine certain references, e.g., because they are in the same field or they complement each other or because one or the other provides a motivation for the combination. The expert must also disclose the underlying facts or data upon which the opinion is based.
There are several other things that can go into the petitioner’s initial expert declaration. It is often a good idea to provide a definition of the “person having ordinary skill in the art” in the particular context of the challenged patent. It is especially important to do so in a highly technical area requiring substantial education and training. For instance, defining the skilled artisan as someone highly educated, e.g., holding a Ph.D. or having many years of relevant experience, can bolster petitioner’s arguments that artisan would be aware of prior art references and readily combine their teachings. It is also frequently beneficial for the expert to preemptively dismiss the so-called “secondary considerations” of non-obviousness, e.g., by having the expert opine that a claimed combination of known features provides no unexpected results.
One final caveat on the use of experts should be noted: the PTAB trial rules impose a duty of disclosure of contradictory facts and data. Rule 42-51(b)(1)(iii) requires any party that presents expert opinions also must provide the other side with any documents or evidence that is inconsistent with the contentions in the expert’s declaration or affidavit.
Stay tuned for Part 2 on Challenges to a Party’s Expert.