Recent Federal Circuit decisions demonstrate the significance of expert testimony in connection with a petition for inter partes review (IPR), including the need to identify and provide supporting expert evidence at the time of filing. An IPR petition thus differs from a patent invalidity case in District Court, where, while there must be a reasonably specific claim initially, the specific grounds of invalidity can change as the case proceeds. After the IPR petition, the rules of the Patent Trial and Appeal Board (PTAB) give an IPR petitioner only limited opportunity to change its position.

First, an IPR petitioner may file a motion to submit supplemental information only upon request within one month of institution. Such a motion will be granted only if: (1) the information "could not have been obtained earlier"; and (2) consideration of the information would be in the interest of justice. 37 C.F.R. § 42.123. Second, an IPR petitioner may reply to a patent owner's response, including submission of expert testimony, but "only to arguments raised in the... patent owner response." 37 C.F.R. § 42.23(b). Hence, as two recent Federal Circuit decisions illustrate, IPR petitions need to be robust and include all of the information necessary to establish the unpatentability of the challenged claims.

The Federal Circuit's decision in Redline Detection, LLC v. Star Envirotech, Inc. demonstrates the difficulty of curing deficiencies in an IPR petition through supplemental expert evidence. 2015-1047 (Fed. Cir. Dec. 31, 2015). Redline petitioned for IPR of claims 9 and 10 of Star Envirotech's U.S. Patent No. 6,526,808, which is directed to "method of generating smoke for use in volatile and explosive environments." Redline, slip. op. at 2. Redline's IPR petition did not include an expert declaration. After IPR institution, Redline timely filed a motion to submit supplemental information including an expert declaration. Id. at 8-9. The PTAB denied the motion and determined that Redline did not establish a prima facie case of obviousness in its IPR petition. Id. at 9. The court affirmed the PTAB’s decision and confirmed the PTAB's authority to decline consideration of supplemental information. Id. at 33. As such, this decision illustrates that if expert testimony is necessary to establish unpatentability, such evidence should be included with the petition at the time of filing.

However, in a different decision, the Federal Circuit indicated that an IPR petition does not necessarily need to include expert evidence, because the PTAB has technical expertise, which may often make it easier to understand the prior art without such evidence:

No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art. What the Board can find without an expert depends on the prior art involved in a particular case. Even in court, we have said, "expert testimony is not required when the references and the invention are easily understandable." And Board members, because of expertise, may more often find it easier to understand and soundly explain the teachings and suggestions of prior art without expert assistance.

Belden, Inc. v. Berk-Tek LLC, 2014-1575, -1576 (Fed. Cir. Nov. 5, 2015), slip op. at 24 (internal citation omitted).

In that case, Berk-Tek's predecessor petitioned for IPR of all claims of U.S. Patent No. 6,074,503, directed to a method of making a cable. Id. at 2-4. The IPR petition did not include an expert declaration. Id. at 9. Still, the PTAB instituted IPR on all of the claims. Id. at 6. Along with its reply to the patent owner's response, which included an expert declaration, Berk-Tek submitted an expert declaration. Id. at 7-8. While Belden opposed Berk-Tek's reply and declaration, the PTAB denied Belden’s motion to exclude because: (1) the declaration "fairly responded to" Belden's expert declaration; and (2) it "was unnecessary to establish a prima facie case of obviousness." Id. at 11. Ultimately, the PTAB cancelled four of the six claims of the '503 patent. Belden appealed. Id. On appeal, the Federal Circuit determined that all of the patent claims were obvious and the PTAB did not err when it declined to exclude Berk-Tek's expert declaration. Id. at 29-30. In reaching its conclusion, the Federal Circuit noted that "the prior art is close enough and plain enough that, with even an abbreviated argument in the Petition," a finding of obviousness was warranted. Id. at 16 (discussing claim 2). Thus, this decision establishes that, depending on the art, a robust IPR petition does not need to include expert testimony.

The bottom line: Patent litigators who are accustomed to relying on discovery to bolster their cases, including through subsequent expert opinions, must re-think their approach. A petitioner may be not be able to strengthen its hand as the case proceeds – the petition must develop and present its best case at the start.