In Silicon Laboratories v. Cresta (IPR2014-00809), both parties relied heavily upon expert testimony to construe key claim terms. Petitioner Silicon Laboratories proffered an expert Declaration with their Petition and second expert Declaration (same expert) with their Reply. The Patent Owner, Cresta Technology, filed an expert Declaration with their Response. Both experts were deposed and the deposition transcripts were submitted as evidence.… More
Don’t go to the trouble of putting on expert testimony without giving the PTAB basis to rely on it.
Patent Owners use expert witnesses in PTAB proceedings for one basic purpose: to undermine the Petitioner’s case for unpatentability. Expert witnesses can do this in two ways: by refuting the Petitioner’s evidence, and by introducing new evidence that dilutes the Petitioner’s evidence for unpatentability to less than a preponderance. … More
Lawyers generally do not like to lay out their entire case at the outset of litigation. They like to hold back some arguments to see how their adversary responds. Yet a PTAB trial proceeding is one place where doing anything less than a full reveal could prove fatal.
The Petition is the one and only shot the Petitioner has at making the case for unpatentability. … More
There has been much discussion about whether Patent Owners should have the right to submit new testimonial evidence with the preliminary response. The patent office has officially proposed just such a rule and is considering public comments as part of the rulemaking process (update: the new rules are here and authorize preliminary declarations). Patent Owners may, in theory,… More