It is common practice to submit expert declarations in support of pleadings filed in post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Practitioners planning to submit such expert declarations must balance (1) the PTAB’s expectation that expert declarations not merely be restatements of the corresponding pleadings, with (2) the requirement that the pleadings contain all necessary arguments and not incorporate by reference any subject matter from the corresponding expert declarations.
PTAB panels have expressed disapproval of expert declarations which merely restate the contents of corresponding pleadings. In Kinetic Technologies (IPR2014-00529), the petitioner submitted an expert declaration which contains arguments that were virtually identical to arguments set forth in the petition but added the phrase “it is my opinion that” to corresponding statements in the declaration. The panel held that “merely repeating an argument from the Petition in the declaration of a proposed expert does not give that argument enhanced probative value.” Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00529, Paper 8 at 15 (PTAB Sept. 23, 2014). Similarly, a panel found expert testimony to be unpersuasive because it merely repeated the arguments set forth in the pleading with the addition of the phrase “in my opinion.” Infobionic, Inc. v. Braemer Manufacturing, LLC., IPR2015-01704, Paper 11 at 6 (PTAB Feb. 16, 2016).
On the other hand, the PTAB has stated that arguments presented in an expert declaration but not explicitly presented in the corresponding pleading will not be considered. A panel found a patent owner’s statement that “[a]s explained in greater detail in the Madisetti Declaration, new claims 19-23 are patentably distinct from the Petition Prior Art” to be an impermissible incorporation by reference and a contravention of the page limit requirements set forth in 37 C.F.R. § 42.24 (a)(1)(v) (which has since been revised to be a word limit). See Blackberry Corp. v. MobileMedia Ideas LLC, IPR2013-00016, Paper No. 32 at 21 (PTAB Feb. 25, 2014). Another panel similarly held that arguments presented in an expert declaration but not in the corresponding pleading “serve[d] to circumvent the page limits imposed on petitions for inter partes review, while imposing on our time by asking us to sift through over 250 pages of Dr. Roy’s Declaration.” See Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014).
Thus, while the PTAB requires pleadings to contain all arguments sought to be considered, the PTAB also expects expert declarations to be more than mere restatements of the pleadings. How are practitioners to meet these expectations? One issue to consider is 37 C.F.R. § 42.65 which states that little or no weight is to be given to “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based.” See 37 C.F.R. §§ 42.65(a) and (b). When necessary, expert declarations should elaborate on the underlying facts and data which support the legal arguments made in a pleading.
Panels have rejected legal arguments presented in pleadings as being inadequately supported by the corresponding expert declarations. In Kinetic Technologies, the panel found that the expert declaration did not “explain how the teachings of the specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims” and thus did not “provide any factual basis for its assertions.” Kinetic Technologies, Paper 8 at 15. The panel concluded that the expert’s statements were “not a substitute for a fact-based analysis of the proposed combination of references necessary to support those conclusions.” Id. Similarly, the panel in Infobionic held that the expert witness’ testimony offered “little or no elaboration” as to how one of ordinary skill in the art would understand a term at issue. See Infobionic, Paper 11 at 6 (citing Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (fact finder not required to give credit to expert testimony without adequate support)).
Thus, while the panels in Kinetic Technologies and Infobionic criticized the expert declarations as merely being restatements of the corresponding pleadings, the underlying reason for such criticism was the lack of a presentation of the underlying facts or data on which the opinion is based. While each case will present its own unique issues for consideration, these decisions highlight the importance of including all necessary arguments and underlying facts or data in both the pleadings and corresponding expert declarations.