Excluding Expert Declarations: A Difficult Task

December 08, 2015

The Patent Trial and Appeal Board (PTAB) has issued two written decisions in which the admissibility of draft expert declarations was at issue.

On July 27, 2015, the PTAB entered its final written decision in Juniper Networks Inc. v. Brixham Solutions, Ltd. (IPR2014-00425) ultimately deciding that the Petitioner has shown by a preponderance of the evidence that claims 1-5, 8-11, 13-15 and 17 of U.S. Patent No. are unpatentable due to obviousness.  The Board reached the opposite conclusion in A.C. Dispensing Equipment Inc., v. Prince Castle LLC (IPR2014-00511), when it decided that the Petitioner failed to meet its burden of proof by a preponderance of evidence that claims 1-12 of U.S. Patent No. 8,534,497 (the ‘497 patent) are unpatentable. In both of these decisions, the PTAB analyzed the Patent Owner’s Motion to Exclude Petitioner’s Evidence of an Expert Declaration.

In Juniper Networks Inc. v. Brixham Solutions, Ltd., the Board denied Patent Owner’s Motion to Exclude the Declaration of Dr. Tal Lavian. Patent Owner argued that Declarations of Petitioner’s expert witness, Dr. Lavian should be excluded due to the “general evasiveness” of Dr. Lavian and “interference of counsel” during his deposition. In making it’s argument, Patent Owner cites to specific portions of the deposition where Dr. Lavian was allegedly “evasive” and generally concludes that “this type of evasiveness pervaded the entirety of the deposition.” The Board however determined that Patent Owner was not persuasive, failed to show evasiveness, and that Dr. Lavian responded to the deposition questions to the best of his ability.  Consequently, the Board found that the behavior of counsel, alone or in combination with the occurrences at a deposition is not a sufficient basis to exclude the declarations.

Interestingly, the Petitioner submitted a second declaration from Dr. Lavian that was outside the scope of the original Petition.  The Patent Owner also pushed for the PTAB to exclude this second declaration.  In response, the PTAB asserted that it did not rely on the second declaration and denied the motion to exclude as moot.

The PTAB also denied Patent Owner’s Motion to Exclude  Declaration of Dr. Julio Militzer in A.C. Dispensing Equipment Inc., v. Prince Castle LLC (IPR2014-00511).  The Board rejected Patent Owner’s argument that Dr. Militzer fails to meet the definition of a person of ordinary skill in the art because “there is no indication that Dr. Militzer has worked as an engineer in the field of liquid dispensing equipment” and thus is not qualified to conduct an obviousness analysis under Federal Rules of Evidence (FRE) 702. The Board explained that “to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “‘qualified in the pertinent art.’” The Board found that although Dr. Militzer has never worked as an engineer in the field of liquid dispensing equipment, his area of specialization as a Professor in “disciplines like Thermodynamics, Heat Transfer and fluid Mechanics,” makes him qualified in the pertinent art.


Aiyda Gharamani


Ms. Ghahramani practices in all areas of intellectual property law with a focus on litigation, rendering opinions on patentability, infringement, and validity, as well as on the prosecution of intellectual property matters.