IPR Expert Declaration

Expert declarations are typically the most important evidence in an IPR proceeding: WHY EXPERT TESTIMONY IS CENTRAL TO IPR: IPR proceedings at the PTAB are conducted through written submissions — there is no live testimony at the oral argument (oral arguments are for attorney argument, not witness testimony); all expert testimony is submitted in written declarations; the PTAB decides based on the papers and the supporting declarations; THE PETITIONER'S EXPERT DECLARATION: every well-prepared IPR petition is supported by a declaration from a technical expert; the declaration accompanies and supports the petition; it serves to: (1) ESTABLISH THE LEVEL OF ORDINARY SKILL IN THE ART (POSITA): the expert defines who a 'person of ordinary skill in the art' is in terms of education; years of experience; and relevant technical knowledge; claim construction and obviousness are analyzed from the perspective of this POSITA; (2) CLAIM CONSTRUCTION: the expert explains how a POSITA would interpret each disputed claim term; this often aligns with the broadest reasonable interpretation standard (now Philips standard in IPR post-2019); (3) MAPPING PRIOR ART TO CLAIMS: the expert analyzes each prior art reference and explains how each element of the challenged claim is found in the prior art; element-by-element; (4) MOTIVATION TO COMBINE (for obviousness): the expert explains WHY a POSITA would have combined multiple prior art references; the combination must be more than 'it would have been obvious to try'; it must have a reasonable expectation of success; THE PATENT OWNER'S EXPERT DECLARATION: submitted with the patent owner response; it serves to: (1) REBUT claim construction; (2) CHALLENGE the prior art mapping (elements not present; misread prior art); (3) REBUT motivation to combine; (4) PRESENT SECONDARY CONSIDERATIONS (commercial success; long-felt need; failure of others; unexpected results) with nexus to the claims; WHEN NO EXPERT IS FILED: a party that fails to file an expert declaration typically loses; PTAB has repeatedly held that attorney argument is not a substitute for expert testimony on technical issues; in KSR International v. Teleflex (S.Ct. 2007) terms, the 'ordinary skill' issues require expert opinion when the technology is complex.

37 C.F.R. § 42.65 sets out the PTAB's requirements for expert testimony: THE REGULATION: 37 C.F.R. § 42.65 provides: '(a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. Conclusory expert testimony is entitled to little or no weight. (b) A party presenting testimonial evidence must serve the testimony in the form required by 37 C.F.R. § 42.53'; REQUIREMENT 1 — UNDERLYING FACTS AND DATA: the declaration must disclose the FACTS and DATA the expert relied upon; the expert cannot simply state conclusions; EXAMPLE OF INSUFFICIENT: 'In my opinion, claim 1 is obvious in view of references A and B because they disclose all the claimed elements'; EXAMPLE OF SUFFICIENT: 'Reference A (Smith 2010, Ex. 1003) at column 4, lines 15-22 discloses a processor configured to [specific function]. This disclosure corresponds to the processor element in claim 1 because... A person of ordinary skill in the art reading Smith 2010 would understand this disclosure to cover... because... [technical explanation with citations to specific portions of the reference]'; REQUIREMENT 2 — BASIS FOR OPINION: the declaration must explain the BASIS for each opinion; not just what the expert thinks but WHY the expert thinks it; REQUIREMENT 3 — CROSS-EXAMINATION: all declarants are subject to cross-examination by the opposing party through DEPOSITION; the party filing the declaration cannot submit re-direct testimony after deposition (only one deposition per declarant for each submission); PRACTICAL REQUIREMENTS — FORM: declarations must be in writing; signed under 28 U.S.C. § 1746 (declaration under penalty of perjury); exhibit numbers (petitioner = Exhibit 1001 series; patent owner = Exhibit 2001 series); testimony must be submitted as an exhibit; EXPERT QUALIFICATION: the expert must be qualified in the relevant art; qualifications are established at the beginning of the declaration (CV attached); PTAB may exclude or discount testimony from an expert who lacks relevant qualifications; WEAK DECLARATIONS IN PRACTICE: PTAB repeatedly discounts declarations that are: conclusory statements without underlying analysis; attorney argument parroted by the expert; drafted by the attorney without independent expert input; lacking citations to specific portions of prior art; making broad generalized statements that apply to any technology.

An effective petitioner's declaration is detailed, technically rigorous, and maps every claim element to specific prior art disclosures: THE POSITA DEFINITION: define the POSITA precisely: 'A person of ordinary skill in the art would have a bachelor's degree in [field] with at least [N] years of experience in [specific technology area]; or a graduate degree in [field] with [N] years of experience'; the definition should be defensible and not so narrow that it excludes the expert themselves; CLAIM CONSTRUCTION SECTION: explicitly address disputed claim terms; for each term: provide the ordinary meaning to a POSITA; cite the specification for support (Philips standard); note if the patent explicitly defines any terms; avoid BRI constructions that no longer apply (post-SAS Institute, IPR uses Philips standard); PRIOR ART MAPPING — THE HEART OF THE DECLARATION: for ANTICIPATION: map every element of the challenged claim to specific disclosures in the single prior art reference; cite page and line numbers or figure numbers; explain why a POSITA would understand the disclosure to disclose the claimed element; for OBVIOUSNESS: identify which elements come from which reference; explain WHY a POSITA would have combined them (not just that they COULD be combined); MOTIVATION TO COMBINE SECTION: the most important and most scrutinized part; cite the secondary references as motivation; address the KSR factors: COMBINING KNOWN ELEMENTS: 'Reference A and Reference B address the same problem and a POSITA would have recognized that the solution in Reference B would improve the device disclosed in Reference A'; OBVIOUS TO TRY: if there are a finite number of known solutions, explain why a POSITA would have tried each; REASONABLE EXPECTATION OF SUCCESS: explain specifically why combining the references would have worked; ADDRESSING COUNTERARGUMENTS: anticipate the patent owner's arguments; address teaching away; explain why secondary considerations do not overcome the prima facie case; WRITING STYLE: write in the first person and ensure the expert actually understands every sentence; PTAB judges can tell when a declaration is attorney argument ghostwritten versus genuine expert opinion.

The patent owner's expert declaration strategy differs fundamentally from the petitioner's: TIMING: the patent owner's declaration accompanies the PATENT OWNER RESPONSE filed within 3 months (extendable to ~6 months) after institution; THE PATENT OWNER'S GOALS: (1) REBUT CLAIM CONSTRUCTION: if the petitioner's claim construction is wrong, the patent owner expert should explain the correct construction from the perspective of a POSITA reading the claims in light of the specification; (2) CHALLENGE PRIOR ART MAPPING: identify specific places where the petitioner's expert misread or mischaracterized a prior art reference; show that the element the petitioner points to does NOT disclose what is claimed; (3) REBUT MOTIVATION TO COMBINE: this is often the most productive attack; argue that: the references are from different fields; a POSITA would not have looked at them together; the combination would have DESTROYED desired properties in one reference (teaching away); there was no reasonable expectation of success; the motivation is hindsight reconstruction; (4) SECONDARY CONSIDERATIONS: if the patent has secondary considerations evidence, the expert must establish NEXUS — the connection between the commercial success; unexpected results; or long-felt need and the SPECIFIC CLAIMED FEATURES; without nexus, secondary considerations are given little weight; COMMERCIAL SUCCESS NEXUS: the commercial success must be tied to the inventive aspect of the CLAIM — not to marketing; branding; pricing; or non-patented features; the expert (with supporting documentary evidence) must show that users buy the product BECAUSE of the specific features claimed in the challenged patent; UNEXPECTED RESULTS: the expert must: identify the claimed result that was unexpected; show what was expected (the prior art baseline); compare the claimed result to the expected result with data; show that a POSITA would have been SURPRISED by the magnitude of the difference; DOSAGE-RESPONSE curves; comparative tables; or specific data comparisons are ideal; REBUTTAL STRUCTURE: organize the declaration to rebut each ground of the petition serially; make sure every claim element that the petitioner says is found in a reference is specifically addressed.

PTAB weighs competing declarations based on credibility, specificity, and response to the opposing party's positions: HOW PTAB WEIGHS COMPETING DECLARATIONS: SPECIFICITY: more specific declarations (citing specific lines; paragraphs; figures) are more persuasive than general assertions; RESPONSIVENESS: a declaration that directly addresses and rebuts the opposing expert's specific points is more credible than one that ignores them; QUALIFICATIONS: PTAB looks at the expert's specific qualifications in the relevant art sub-area; an expert with direct hands-on experience in the exact technology is more persuasive than a general academic; INTERNAL CONSISTENCY: if the expert contradicts themselves across the declaration or compared to their deposition testimony, PTAB notes this; CONSISTENCY WITH PATENT: for the patent owner's expert, testimony that is consistent with the patent's own description is more credible; DEPOSITION STRATEGY — CROSS-EXAMINING THE OPPOSING EXPERT: depositions of IPR experts are conducted by OPPOSING counsel (not your own expert's cross-examination); the petitioner's counsel deposes the patent owner's expert; the patent owner's counsel deposes the petitioner's expert; depositions are limited and focused; GOALS OF CROSS-EXAMINATION: INCONSISTENCY: identify statements in the declaration that conflict with the expert's prior publications; other testimony; or the patent specification itself; KNOWLEDGE GAPS: test whether the expert actually understands the technology at the level of a POSITA; CONCESSIONS: ask questions that lead the expert to confirm facts favorable to your position; OVERSTATEMENT: probe whether the expert overstated the certainty of their opinion; KEY DEPOSITION TACTICS FOR IPR: CONFRONTING WITH PRIOR ART NOT IN THE PETITION: ask whether certain passages in a reference disclose specific features; the expert may concede disclosure that helps your case; ASKING ABOUT UNDERSTANDING OF THE FIELD: test whether the expert can explain basic field concepts; this tests whether they are truly a POSITA; EXHIBIT USE: show the expert specific excerpts and ask them to reconcile with their declaration; DEPOSITION LENGTH LIMITS: PTAB depositions are time-limited (the Office Patent Trial Practice Guide specifies limits); inefficient depositions that run out of time lose value; prepare a tight deposition outline; AFTER DEPOSITION: deposition transcripts are submitted as exhibits; PTAB reviewers read them carefully; dramatic moments (clear inconsistencies; important concessions) should be highlighted in the final briefs.