In Guangdong Xinbao Electrical Appliances Holdings v. Adrian Rivera, the PTAB denied a motion to exclude an expert declaration relied upon by the Petitioner in its Reply to the Patent Owner’s Response. In its ruling, the Board took the opportunity to clarify that expert testimony is not always necessary for an IPR Petitioner meet its burden to establish unpatentability by a preponderance of the evidence. IPR2014-00042, Paper 50 (Feb. 6, 2015).

In its motion to exclude, the Patent Owner argued that it was impossible for the Petitioner to meet its burden to show unpatentability without expert testimony as to how a person of ordinary skill in the art would have interpreted the prior art relied upon by Petitioner to show anticipation. And because the petition failed to include such an expert declaration, the Patent Owner argued that the expert declaration relied upon by Petitioner in its Reply should be excluded.

Explaining that “[t]estimony from a technical expert is not a prerequisite for establishing unpatentability by a preponderance of the evidence,” the Board noted that the prior art relied upon by Petitioner “describes a relatively straightforward and easily understandable technology.” Therefore, according to the Board, Petitioner provided sufficient explanation and evidence—relying on the prior art itself as evidence—as to why the prior art anticipated the patent claim at issue, without the need for testimony from a technical expert. As a result, the Board did not reply upon the expert declaration submitted by the Petitioner with its Reply, and it denied the motion to exclude.

As this decision shows, the necessity of an expert declaration to establish unpatentability will depend on the particular facts of a given case. Nevertheless, if there is any question as to whether the technology described in a prior art reference is “relatively straightforward and easily understandable,” petitioners would be wise to err on the side of including an expert declaration with their petitions.