In Agila Specialties Inc. v. Cephalon, Inc., the PTAB provided guidance on seeking the disqualification of an expert. Although the Board authorized the Patent Owner to file a Motion to Disqualify the Petitioner’s expert on the basis of an alleged conflict of interest, the Board raised a host of issues the Patent Owner would need to address in its motion. IPR2015-00503, Paper 13 (Aug. 19, 2015).

The Patent Owner, which did not raise the issue of disqualification until after the Board instituted trial, asserted that Petitioner’s expert served as a consultant for the Patent Owner under the terms of a consulting agreement, prepared a confidential report characterizing the Patent Owner’s drug formulations, and had a privileged communication with Patent Owner’s outside patent counsel. Seeking to strike the expert’s declaration and disqualify the expert, Patent Owner argued that Petitioner’s expert might use such confidential and privileged information in rendering his opinion as an expert for Petitioner in the proceeding. Asserting attorney-client privilege, the Patent Owner represented that the privileged communication generally related to the patent at issue in the IPR.

The Petitioner countered that the expert’s university employer, not the expert, was a party to the consulting agreement, that the report being technical in nature did not contain any privileged information, and that the alleged relationship between the Patent Owner and the expert ended many years before the dispute between the Patent Owner and Petitioner arose.

If presented with a disqualification motion, the Board explained it would apply a two-prong test: (1) whether it is objectively reasonable for the moving party to believe that it had a confidential relationship with the expert; and (2) whether the moving party disclosed confidential information to the expert that is relevant to the current proceeding. The Patent Owner bears the burden to establish both prongs are met. See 37 C. F. R. § 42.20(c).

Noting that timeliness is an important factor in deciding a disqualification motion, the Board added that the Patent Owner should explain in its motion why it waited more than seven months after the filing of the Petition and expert declaration to seek authorization to disqualify the expert. The Board further stated that it was “highly unlikely” it would strike the expert declaration in its entirety, prohibit Petitioner from remedying the situation, or allow the trial to proceed without any witness for Petitioner.

During the telephonic conference with the Board, Petitioner complained that Patent Owner communicated with the expert without Petitioner’s authorization. Patent Owner in response admitted it sent a letter directly to the expert without notifying Petitioner. Accordingly, the Board authorized Petitioner to contact the Board to discuss an authorization to file a motion for sanctions against Patent Owner if the parties cannot reach agreement on the disqualification issue.

As this decision shows, because the Board treats disqualification of an expert as a drastic measure, a party seeking disqualification should be prepared to justify why disqualification is necessary, and it should narrowly tailor the relief it seeks.  Further, parties should not delay after the filing of an expert declaration to raise any disqualification issues.