You selected your experts – Ms. Boot (an expert for the patent owner, SneakRTech) and Dr. Slipper, PhD (an expert for the Petitioner, BadGuys) - to assist SneakRTech at the PTAB in cases involving aglet patents against BadGuys. BadGuys’s patent is related to the material science of plastic aglets, and how nanocoatings provide a color-change depending on the temperature for use in a snowboarding boot. SneakRTech’s patent related to an advancement in the geometry and manufacturing process to ensure that they easily insert into the eyelets of the shoe to be used in a desert rock climbing shoe.
But now what?
How do you begin working with the expert?
Does representing a petitioner or patent owner impact strategy?
Does technology change things?
- What should you tell the experts to avoid biasing them?
The only effective experts are candid experts who spot trouble and help resolve the gaps in the case. But at the same time, experts need to focus on the important issues of the case. So controlling information is vital to effective interaction with experts.
For patent owners, an expert needs to have an understanding of the infringement reads and claim construction to increase damages and ease of proving infringement. Ms. Boot should be able to provide an unbiased assessment of the relative strength of BadGuys’s Petition. In defending the patent against the attack, she also should be made aware of any nuance to be maintained in the district court, for example, the understanding of what a particular qualitative geometric term includes, such as “rounded edge about the radial extension element,” in order to maintain the infringement read while defending the patent.
For petitioners, an expert needs to understand the technology space and prior art field. The expert also needs to understand the non-infringement positions and what claim construction is required to avoid infringement. Of course Dr. Slipper should review and opine on the technical subject matter of the color-changing nano-coating and deficiencies of the applied art. But if an important aspect of the infringement claim construction is a dispute over whether a “black-to-white,” or “dark blue-to-light blue,” change is within the scope of the claim, that interpretation is something that is important to explore with the expert at an early stage.
Each of these requires experts who can see the bigger picture and are integral parts of the team at an early stage in the proceeding. At the same time, the expert needs to make their own assessment of all documents in order to ensure you are getting their candid, unbiased feedback.
- The declaration
The declaration cannot be expanded upon during trial so it must be as complete as possible when filed. The declaration must account for both known and unknown positions the patent owner may take—and to a certain extent how the PTAB itself will view those positions. So your expert needs to pick apart your arguments and provide rebuttal. This will crystalize your best arguments and identify opportunities to change course prior to filing.
Additionally, your expert needs to be able to survive cross-examination on every word in their declaration – to stand behind their opinions. So the expert needs to be critical of everything found in their final declaration. If there is any doubt or hedging, work with the expert to come to an agreement on acceptable language, or else omit the position entirely.
The declaration also needs to cover all aspects of the case, such as resolution of the definition of a person of ordinary skill in the art, whether any terms require any express construction, and the presence (or absence) of secondary considerations to the extent applicable. For claims that cover multiple fields, it is foreseeable that multiple experts may be required to address different parts of a complex system claim, for example. In this way, each piece of the case is treated by the appropriate expert and bolsters the client’s chances for a win.
To achieve this level of comprehensiveness and complexity requires many interactions and drafts between the expert and attorneys. If travel and in-person meetings are not feasible, consider video conferences and other ways to interact with the expert. Additionally, litigation positions need to be taken into account and coordinated with the client and litigation counsel, ideally prior to the first draft.
Some technologies may benefit from the expert discussing additional references that confirm the state of the art (not used in grounds for unpatentability). Consider the narrative coming through in the declaration as well as the expert’s personal, hands-on experience. For example, Ms. Boot was a manufacturing and assembly engineer for over a decade, and can speak directly to building prototypes of aglets—indeed, she has a large personal library of Rock Tech Quarterly, the premier journal on rock climbing technology from her days in the plant. Her personal narrative, coupled with her knowledge of a particular issue discussing a prior aglet development, may be helpful in crafting the declaration and lending credibility to her opinions.
Focusing your expert on the relevant timeline is also important. Dr. Slipper will provide a technology tutorial and show that in reality, BadGuys’s color-changing scheme is old and well-known. On the other hand, Ms. Boot will make clear that SneakRTech was a pioneer in desert rock climbing aglet technology and succeeded where so many others had failed—likely focusing on a much shorter time period of relevant technology.
Finally, on the Patent Owner side, consider whether to include declarations with the preliminary response. Recent data appears to favor such a strategy, particularly to attack motivations to combine and work to have an early win.
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Next up ---- the deposition.
This article appeared in the July 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.