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ARTICLE · 28 SEPTEMBER 2022

Experts And Expert Testimony In PTAB Proceedings

Jones Day
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In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings.

United StatesIntellectual Property
Matthew Johnson
Matthew Johnson
Stephanie Mishaga
Stephanie Mishaga
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In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings. The panelists stressed that well-prepared experts can help a proceeding. But on the flip side, an ill-prepared or evasive expert can damage it. After providing a quick overview of the relevant rules and regulations relating to experts, the panelists dove into discussing hypothetical proceeding situations. A number of takeaways came out of that discussion, that both Patent Owners and Petitioners may want to keep in mind. The PTAB judges suggested that parties be mindful of (1) carefully defining the level of ordinary skill in the art to ensure that an expert is qualified to opine, (2) not using expert testimony to fill in gaps of prior art, and (3) using expert testimony from another proceeding as it may not be new testimony subject to routine discovery rules.

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