APJs’ Accept Legal Expert’s Declaration Focused on Specific Dispute

Scott Daniels | April 7, 2014

Most judges are reluctant to permit expert testimony on the state of the law – they consider themselves to be perfectly capable of understanding and applying the law without such assistance.  This view is embodied in the Patent Office rules for inter partes review proceedings:   “[t]estimony on United States patent law or patent examination practice will not be admitted.”  37 C.F.R. § 42.65(a). 

The APJs recently indicated some flexibility on this point, however, in Amneal Pharmaceuticals v. Supernicus Pharmaceuticals (Paper 41, IPR2013-00368).  There, the Patent Owner filed an expert declaration of a former Patent Office official, explaining why certain documents at the Patent Office would not have been reasonably accessible to the public and therefore not prior art against the challenged claims. 

In a conference call, the Petitioner attacked the admissibility of the declaration.  The APJs disagreed, stating that the declaration “is not directed entirely to expert testimony on patent examination practice. Rather, the declaration testimony appears to tether the discussion of the relevant patent examination practice closely to the facts of this case for the purpose of providing context. The Board takes the view that the exhibit is not inadmissible under 37 C.F.R. § 42.65(a).”  (Emphasis added).

In a twist the APJs then invited the Petitioner to file a written motion to exclude the declaration.  So perhaps the last word on this issue has not yet been spoken.  Still, the message for practitioners is that expert testimony on legal issues is possible so long as it is limited to analysis of the specific facts in the case under consideration.  More general comments about the state of the law or Patent Office practice are likely to be excluded.

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