En route to holding the claims of the challenged patent invalid, the PTAB addressed two issues regarding the qualifications of a declarant providing testimony concerning how one of ordinary skill would understand the applied prior art. U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27 (Sept. 14, 2015).  The first issue was whether the declarant needed to be qualified as an “expert” on the relevant subject matter under Fed.R.Evid. 701, 702, at least in instances where the testimony was not sought to be excluded.  The second issue was whether the declarant needed to be qualified as one of ordinary skill as of the critical date of the challenged patent versus sometime later. The PTAB answered “no” on both, concluding that, at best, these issues could be relevant to the weight accorded the declarant’s testimony.

On the first issue, the PTAB analyzed whether the declarant need be qualified as an “expert” pursuant to the Federal Rules of Evidence as follows:

As an initial matter, we note that Patent Owner is not seeking to exclude Dr. Kahaleh’s testimony, and therefore the proper inquiry is not whether Dr. Kalaleh is qualified under the Federal Rules of Evidence (“Fed. R. Evid.”).  See 37 C.F.R. §§ 42.62, 42.64; Fed. R. Evid. 702, 703. In other words, contrary to what Patent Owner’s argument suggests, it is not necessary that Dr. Kahaleh qualify as an expert under for the Federal Rules of Evidence for us to consider evidence from him. We consider Dr. Kahaleh’s qualifications to determine what weight should be accorded to the evidence he provided.

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[W]e determine that Dr. Kahaleh has experience relevant to the field of the invention, and Patent Owner’s argument that we should give such testimony little or no weight is not persuasive.

The PTAB then proceeded to analyze whether the declarant needed to have obtained the relevant qualifications as of the critical date of the patent:

Second, Patent Owner contends that we should give Dr. Kahaleh’s testimony little or no weight because, “Dr. Kahaleh did not ‘have the skill and experience of an ordinary worker in the field,’ and he did not ‘have knowledge of all pertinent prior art’ . . . in May of 2001.” PO Resp. 18–20 (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986), and Schott Gemtron Corp. v. SSW Holding Co., Inc., Case IPR2013-00358, slip op. at 18 (PTAB Aug 20, 2014) (Paper 106)).

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Custom Accessories does not address whether an expert must have been qualified as of the critical date of the patent being discussed. Id.

Schott, a non-precedential Board decision, does not stand for the proposition that an expert witness must have been a person of ordinary skill in the art at the time of the claimed invention of the patent challenged. … Rather, in context, the Board determined that Petitioner’s witness was not a person of ordinary skill in the art at any time, to include at the time of the invention of the challenged patent. Schott at 17–18. A witness must provide testimony about the level of skill in the art as of the critical date; however, the witness need not  have acquired that knowledge as of the critical date.

The date issue makes this case interesting. More generally, though, it reflects that in all but egregious cases the PTAB will likely continue to adhere to its practice of weighing testimony for what it’s worth as opposed to refusing to consider the testimony at all. In turn, this practice decreases the chance of obtaining a reversal on appeal, given the deferential standard of review owed to the PTAB’s exercise of its own discretion.