As an Administrative Patent Judge I saw a fair share of expert declarations that were little more than "expertized" versions of the IPR petitions they accompanied. By that I mean declarations that more or less read word-for-word identically to the petition, except for a generous sprinkling of "In my opinion" preambles throughout and a perjury acknowledgment at the end. Usually, though not always, these petitions went nowhere.
Now, a Petitioner doesn't need to submit an expert declaration. Petitioners have gotten cases instituted without them and even prevailed in the final decision without a petition expert declaration. See, e.g., Belden Inc. v. Berk-Tek, LLC, 805 F.3d 1064, 1071 (Fed. Cir. 2015) (affirming unpatentability of certain claims and reversing confirmation of remaining claims in IPR2013-00057, despite Petitioner not filing expert declaration with petition).
But that is the exception, not the rule. Far more often, especially in obviousness challenges, the Petitioner's expert performs the crucial function of explaining the state of the art and the backdrop against which the invention was made. Experts explain what one of ordinary skill in the art would have understood a reference to be teaching. Experts help weave a coherent story of how an invention would have emerged as an obvious combination of known elements ( or not, in the case of a Patent Owner). Omitting a declaration runs the risk that no persuasive evidence will remain in the Petitioner's case once the Patent Owner has debunked the Petitioner's attorney argument with new evidence. The Petitioner then might find itself in " Death Valley," with enough to institute trial but too little to win: an estoppel nightmare.
Nearly as bad, then, as omitting a declaration is filing one that does little more than parrot the Petition. Judges pick up on this quickly and learn early on to disregard such declarations. Such was the case in InfoBionic, Inc. v. Braemar Manufacturing, LLC, IPR2015-01704, Paper 11 (denying institution). As the PTAB explained, the Petitioner's obviousness argument was premised on an assertion of the meaning of a reference. Id. at 12. The Petitioner's expert merely repeated the argument about what the reference meant without explaining why he believed that meaning to be correct. Id. at 13. The Board rebuffed the expert's testimony as "conclusory" and gave it little or no weight. Id. at 14–15 (citing 37 C.F.R. § 42.65(a) ("Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.")).
The lesson is, of course, to use experts to augment arguments, not repeat them. Have the expert provide a factual underpinning to the arguments. Let the expert guide the judges through the art, pointing out landmarks in documentary evidence that would have guided the person of ordinary skill to make the combination. Anything less is a waste of material.
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