Using the Same Expert at the PTAB & District Court?

Are Two Heads Better than One?

When faced with parallel PTAB and District Court/ITC proceedings, both patent owners and petitioners alike must decide whether to use the same expert in each proceeding, or hire a dedicated expert for each. Certainly there is much efficiency to be gained using the same person — not to mention the seeming likelihood of greater consistency in opinion.

But it is preferable, in my view, to use separate experts. This often limits document inventory for the PTAB deposition, and opposing counsel is less inclined to extend the deposition with questions that are designed to illicit fodder for the litigation effort. Likewise, use of separate experts does not give litigation counsel extra “shots” at the same witness.  Also, with the PTAB now applying the same Philips claim construction of the district court, as discussed previously, there is also an increased interest in claim construction related testimony should the PTAB proceeding fail.

Recently, the District of Delaware considered whether a litigation expert should have to divulge any consulting (non-testifying) work with respect to an earlier PTAB proceeding.

In an order (here) entered in United Therapeutics Corporation v. Liquidia Technologies, Inc., 1-20-cv-00755 (DDE 2021-05-17, Order) (Jennifer L. Hall), the court denied defendant’s request for an order compelling the plaintiff’s claim construction expert to provide sworn responses to questions advanced pursuant to Fed. R. Civ. P. 23(a)(2). Defendants argued that the litigation expert used for claim construction should answer whether or not he played a role in the related IPRs.

Specifically, the questions sought to determine “if and when [plaintiff’s expert] consulted with [plaintiff’s] attorneys regarding briefs filed in IPRs concerning two of the patents-in-suit.”

The court rejected defendant’s argument that answers to such questions constitute “‘facts or data considered by’ [plaintiff’s expert] in forming his opinions” under 23(a)(2). The court further suggested that “under the particular circumstances,” disclosing information on the fact and timing of the expert’s communications with plaintiff’s attorneys “would violate the spirit, if not the letter, of Fed. R. Civ. P. 26(b)(3), (4).” The court disagreed that these questions were “basic information that would otherwise be included on a privilege log,” noting that if the communications did not need to be logged, the court would not require the expert to answer questions about them.

So here, the use of separate experts insulated the patent owner from questions regarding the earlier construction. Had the same expert been used, presumably, the earlier submissions to the PTAB would have been considered more relevant to the forming of the expert opinions in the Delaware Court.

Scott A. McKeown is an author of the Patents Post Grant