Evidentiary Considerations in PTAB Trials

Gerald M. Murphy, Jr. and Lynde F. Herzbach for Corporate Counsel

January 26, 2016

Evidence submitted in a trial before the Patent Trial and Appeal Board (PTAB) varies considerably from that submitted in district court litigation in terms of form, substance and method and timing of presentation. A major factor to consider when selecting evidence to present in a PTAB trial is the audience receiving the evidence, which in the case of a PTAB trial is a panel of administrative patent judges (APJs) with formal scientific education and training and years of experience in patent law. Numerous orders regarding motions to exclude have noted the PTAB’s disfavor for such motions, usually noting the strong public policy for making all information filed in a non-jury, quasi-judicial administrative proceeding available to the public, especially in the determination of patentability of claims of an issued patent. This article will explore various issues, from the perspective of the petitioner and the patent owner, that must be considered when selecting evidence to be submitted in a PTAB trial.

Know Your Audience

Unlike a trial before a district court, all of the APJs have a scientific degree (and often an advanced degree), and may already be generally familiar with the technology at issue before the proceeding is even filed. And, even if one or more of the judges are not familiar with the particular technology, they are fully capable of, and actually interested in, learning about it. In addition to having scientific training and experience with patents, all APJs are lawyers and members of a state bar.

Forms of Evidence

Most of the evidence in PTAB trials consists of patents, printed publications and expert declarations and cross-examination testimony. Considerable attention has been given in several PTAB trials to the admissibility and weight of nontraditional publications, such as internet publications, websites, presentations or posters from scientific conferences, press-releases and product manuals. Generally, as long as a document qualifies as a printed publication and is properly authenticated, the PTAB will consider the teachings of the reference on the merits.

The PTAB has refused to institute an inter partes review (IPR) proceeding based on posters presented at technical meetings because the petitioner did not establish that the posters were “printed publications,” even though the patent owner admitted that the posters were “presented” at the meetings. In order to establish that a reference (such as a poster or the like) is indeed a printed publication under U. S. patent law, the petitioner may need to provide additional facts, such as evidence that the posters were made sufficiently publicly accessible. A petitioner who fails to provide sufficient facts to support the alleged prior art will not succeed in having a proceeding instituted.

In a PTAB trial, each party also has a right to file evidence in the form of an expert declaration: the petitioner with the petition and the patent owner with the patent owner response. Cross-examination testimony of an expert witness is important to cast doubt on the reliability of an expert’s testimony and, in some cases, to support the position of the cross-examining party. The written transcript must be filed as an exhibit; if either party wants to submit videotaped deposition testimony as evidence, it must convince the PTAB that the videotape is necessary or helpful.
There is also the possibility of presenting live testimony at the PTAB hearing. Specifically, the PTAB has allowed the cross-examination of an inventor/witness at a final hearing in order to “observe the [witness’] demeanor in a live setting.”

Weight and Admissibility of Evidence

Because of their scientific background and experience in patent law, APJs are capable of, and strongly inclined to, look carefully at the primary evidence found in the patents, printed publications and the prosecution history of the patent when assessing the strength of a party’s case. Thus, an APJ may view a particular piece of evidence much differently than a district court judge or a jury. Because APJs have such strong scientific training, they are much less inclined to exclude on evidentiary grounds, and are much more likely to weigh the evidence and accord it the weight to which they believe it is entitled.

APJs are uniquely qualified to weigh the credibility of the testimony of opposing experts and are disinclined to exclude expert testimony. This is best understood by considering the importance and analysis of Daubert challenges in district courts as compared with PTAB trials.

In a jury trial, the judge must perform a gate-keeping role to prevent the jury from being unduly persuaded by an expert witness lacking a sufficient scientific basis for his or her opinion. If the Daubert requirements are not met, the evidence must be excluded and never heard by the jury. However, in a bench trial, the court can hear expert testimony and later decide whether the Daubert requirements have been met. Several circuits have noted, “the court’s gatekeeping role is necessarily different” during a bench trial because “most of the safeguards provided for in Daubert are not as essential in a case ... where a district judge sits as the trier of fact...” and have recognized the relaxed standard applied to Daubert gatekeeping during a trial before a judge as compared to a jury.

If a relaxed Daubert standard is applied in district court bench trials, then an even more relaxed standard should be applied to the admissibility of expert testimony in PTAB trials. With all due respect to district court judges, a typical panel of APJs has decades of combined patent experience and scientific training that allows each member of the panel to not only understand expert testimony, but also to understand some prior art without expert commentary. It is hard to imagine a situation where expert testimony that is not properly grounded in science may mislead an APJ. The PTAB will typically give expert testimony the weight it is due, without resorting to the drastic remedy of excluding the testimony altogether.

Timing of Evidence Submitted by the Petitioner

A petitioner must make its case in the petition due to the threshold requirements for institution. The petitioner should try to anticipate issues or arguments likely to be raised by the patent owner and submit evidence on those issues in the petition because it can be difficult to file additional evidence after a trial is instituted. In a district court proceeding, on the other hand, the parties mainly obtain discovery and develop a record after the initial pleadings are completed.

The issue of admissibility of evidence will usually first arise after institution of trial, when the patent owner serves and files its objections. Based on the other party’s objections, a party may feel that discovery would be helpful to resolve evidentiary issues. However, neither party should count on the PTAB’s granting a discovery motion just because it may lead to evidence regarding admissibility. For example, the PTAB has refused to order the patent owner to produce information relevant to admissibility of a document even though the document was authored by the patent owner. For discovery, the five Garmin factors (1. more than mere allegation; 2. litigation positions and underlying basis; 3. ability to generate information by other means; 4. easily understandable instructions; 5. requests not overly burdensome) must be met regardless of whether the documents sought may be relevant to an evidentiary objection raised by the other party.

Typically, the petitioner’s last chance to file evidence is with the petitioner’s reply; however, there are limits on the types of evidence that can be filed at that point. For example, the PTAB rules indicate that a reply should only address issues raised in the corresponding opposition or patent owner response. Specifically, the Trial Practice Guide indicates: “a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.” Evidence that is new and raised in a manner that does not comply with PTAB procedure can be excluded due to the procedural issues alone.

Timing of Evidence Submitted by the Patent Owner

Like the petitioner, the patent owner has two main opportunities for presenting its case and filing accompanying evidence: one before and one after institution. The first opportunity to submit evidence is with the patent owner preliminary response (POPR) and the second is the patent owner response (POR).

One significant limitation on the POPR is that declaration evidence cannot be submitted. However, the POPR is a good opportunity for the patent owner to tell its side of the story, point out deficiencies in the petition and offer a proposed claim construction on claim terms that will be in dispute. Thus, at the POPR stage, it can be very effective to point to evidence in the prosecution history of the patent that was overlooked or ignored by the petitioner and to submit patents and publications that contradict the evidence submitted by the petitioner. An effective POPR, supported by appropriate evidence, may cause the PTAB to deny institution on what appears on its face to be a well-supported petition. Even if the proceeding is instituted, if a POPR is filed, the patent owner will likely receive a more informative institution decision, which should help it to file a stronger POR.

The POR is filed after trial is instituted and it is the only filing that a patent owner can make as a matter of right after trial is instituted. The patent owner attempts to show in a POR that even though the petitioner has made the threshold showing necessary to have a proceeding instituted, when all the evidence is considered, the petitioner has not carried its burden to show unpatentability of the challenged claims. In this filing, the patent owner can submit any type of admissible evidence that is relevant to a challenged claim. Such evidence will almost always include a declaration of one or more expert witnesses.

The Bottom Line

In conclusion, the evidence submitted in a PTAB trial must be carefully selected and tailored for the audience to which it is intended: PTAB judges who are very experienced in patent law and who are highly technically trained. PTAB judges are usually able to read the patents and printed publications relied on by the parties and reach an opinion as to patentability without heavy reliance on expert testimony. It is essential that any filed expert declaration is persuasive and tells a story that is consistent with the weight of other documentation published before the relevant date. Further, challenges to the analysis and conclusions of an expert are best made to the weight the expert’s opinions should be accorded as opposed to a motion to exclude the expert declaration on Daubert grounds. The PTAB is more likely to accord questionable evidence no weight as opposed to excluding the evidence from the record.


Reprinted with permission from the January 26, 2016 edition of Corporate Counsel© 2016 ALM Media Properties, LLC. All rights reserved.
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