About the Author: Mr. Sheerin is a California licensed patent attorney having represented clients accused of patent infringement in Federal District Court as well as through Inter Partes Review (IPR) at the US Patent Office. A few of Mr. Sheerin's recent results may be viewed here:

Most of the big patent law firms recommend using expert declarations during an Inter Partes Review (IPR) proceeding, such as with the IPR petition or a response filing. The main reason for the recommendation is to increase the law firm billing since the client must pay for the cost of preparing the declaration (expert consulting and drafting cost) as well as the expense of deposing each expert.

Patent litigation at the district court level involves a jury of lay people attempting to decide complex issues of fact (e.g., infringement) without any technical training in the field of the invention. In this district court theatre, of course expert witnesses play their role in attempting to sway the jury members toward a favorable outcome for the client. In contrast, with an IPR proceeding the Patent and Trial Appeal Board (PTAB) judges who decide the issues are all highly experienced, senior patent examiners who are themselves experts in the field of the invention. The PTAB judges will therefore give very little weight to testimony of a paid "expert" when deciding issues of novelty and non-obviousness. The statistics of past IPR proceedings confirm the insignificance of expert declarations in that the outcomes have shown almost no difference between parties that use expert declarations and those that do not. In other words when comparing IPR proceedings where a party has used expert declarations versus IPR proceedings where a party has not used expert declarations, the odds of success are no different, which means expert declarations have almost no effect on the outcome. Again this is to be expected since the PTAB judges are experts not only in patent law, but also in the technical field of the invention and therefore need no help from a biased, paid "expert."

The only evidence the PTAB judges consider significant in an IRP proceeding is prior art not considered by the original patent examiner during prosecution of the patent application. When a patent application is originally examined, the patent examiner typically allocates a relatively short amount of time for searching the prior art since they have a certain quota to meet. It would be unreasonable to burden patent examiners with an extensive prior art search given that only a tiny percentage of issued patents are actually litigated. The PTAB judegs, being patent examiners themselves, understand this dynamic of the US patent system, and so they expect there is likely additional prior art not considered during the original examination of an issued patent. This is why the prior art search conducted prior to filing an IPR petition is by far the most important aspect of the entire IPR proceeding. In effect, an IPR proceeding is merely a re-examination of the patent application, only this time in view of the most relevant prior art discovered by an IPR petitioner.

When hiring a patent law firm to file an IPR petition, you should confirm they understand the importance of the prior art search. Also realize the prior art search can create a conflict of interest for big law firms since their billing increases inversely with the strength of the discovered prior art. That is if a big law firm finds extremely strong prior art, it means a faster resolution to the entire proceeding (both at the PTAB and district court) which means a faster end to their billing cycle.

Finally unless you have unlimited resources to burn on a IPR , you should understand the main effect of employing expert declarations is to increase the billing of the law firms rather than have any significant impact on the outcome of the proceeding.