Answering “I Don’t Know” To a Pivotal Question on Cross

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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.

In its decision (Paper 56), the Board construed pivotal claim terms, one of which—“TV standard”— was discussed by both experts in their Declarations.  During his deposition, however, Patent Owner’s expert when asked “what do you think TV standard represents in Figure 1,” simply stated “I have no idea.”  Not surprisingly, the Board referred to this as the expert’s “lack of knowledge,” and sided with the Petitioner’s contention regarding the meaning of “TV standard.”

After a thorough review of the remaining positions and evidence, the Board found for Petitioner, finding all claims unpatentable.  So take this as a warning: prepare your experts well (and use them properly).   One slip-up may undermine credibility, leaving the Board with no choice but to side with your opponent’s expert.

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