It's important to bear in mind that experts have a different
function at the PTAB than they do in district court; they're
presented in a different way. Their testimony comes in writing,
initially as a written declaration of sworn testimony and then
cross examination comes in through deposition. Oftentimes during a
post AIA-review, the merit arguments will turn on claim
construction issues and an expert becomes crucial in that
regard.
The PTAB judges have the ability to draw on their own technical
backgrounds to determine whether what they're hearing from the
expert rings true. That means the credibility determination is one
that they are more willing to make than fact finders in district
court.
In view of attacking expert credibility, the deposition of that
expert takes on a whole new level of importance. It is very
important during the deposition to push that expert to sometimes
very extreme positions.
Oftentimes experts can find themselves in a surprising place and
the board is quite savvy about determining where someone is within
their qualifications and where they're not. If an expert is too
extreme, their credibility can be put at risk and one side could
get some good testimony that can be quoted before the PTAB to show
that the expert has gone beyond common sense and logic.
Above all, it's important to assess what an expert can
accomplish and one of the things that's important to bring to
bear is what is special about an individual case and what is the
expert going to add to what the board already knows and what the
record already shows.
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