Expert testimony is a feature of most IPRs, and effective expert
testimony can make or break a party's position. When evaluating
expert testimony, the PTAB may consider several issues. First, are
the expert's qualifications sufficient? Second, even if the
expert does not technically qualify as a "person of ordinary
skill in the art," should the expert's testimony be given
weight? The PTAB's decision in Lupin Ltd. v. Horizon
Therapeutics, Inc. (IPR2016-00829) addresses these questions and
illustrates several ways to effectively use expert testimony.
In this case, the patent owner challenged the qualifications of
the petitioner's expert, a medical doctor with decades of
experience in the field. The petitioner argued that the expert
lacked certain certifications and formal training, and so the
expert's testimony should not be given weight. The PTAB
disagreed, concluding that the expert's experience was actually
"more relevant" than specialized certificates and
training,
