Since its creation in 2012 under the America Invents Act, the Patent Trial and Appeal Board (PTAB) has become the go-to venue for patent validity disputes. With thousands of Inter Partes Review (IPR) and Post Grant Review (PGR) petitions filed each year, the PTAB has firmly established itself as one of the most influential forums in patent law.
But while much of the attention in PTAB practice focuses on petition drafting, institution decisions, or Final Written Decisions, one crucial factor is often underestimated: expert witnesses. Expert testimony frequently becomes the deciding factor in claim construction, obviousness, and even procedural disputes. Yet, for attorneys litigating before the PTAB, finding, screening, and managing experts presents unique difficulties that differ from district court litigation. This article examines the recurring problems PTAB attorneys face when retaining experts and explores practical ways to streamline the process.
1. Narrow Expertise Requirements
Unlike in district court, PTAB proceedings are laser-focused on validity. Experts must have deep technical knowledge relevant to the patents at issue, but also the ability to frame their opinions within the PTAB’s procedural and evidentiary framework. A brilliant academic or industry engineer may have impeccable credentials, yet still struggle in deposition when confronted with PTAB’s procedures. Attorneys cannot risk bringing in an expert who is technically qualified but inexperienced in this forum.
- A PhD in the relevant subject area is not enough, the expert must understand prior art analysis, claim construction under Phillips, and the declarations under PTAB standards.
- Obviousness arguments depend on detailed technical motivations to combine prior art, where PTAB judges often require more rigor than district courts.
- Experts must handle cross-examination and PTAB rules for evidentiary submissions.
- Attorneys often spend weeks combing through academic and industry contacts, only to find that the expert lacks PTAB-specific experience.
2. Compressed Timelines
Once instituted, PTAB proceedings move at lightning speed. Statutory deadlines require a Final Written Decision within 12 months. This leaves attorneys very little time to:
- Identify an expert
- Conduct conflict checks
- Secure a signed engagement
- Draft and finalize a detailed declaration
With multiple petitions often filed in parallel, sometimes across overlapping patents, the timeline pressure compounds. Any delay in securing the right expert risks derailing the entire defense strategy.
3. The Conflict Check Minefield
The PTAB has become such a frequent venue that conflicts are now routine. Many of the most qualified experts have testified in prior IPRs or PGRs, sometimes for opposing parties.
- Attorneys risk investing time in onboarding an expert, only to discover a conflict of interest late in the process.
- Others face scheduling conflicts if an expert is already tied up with multiple PTAB depositions or district court trials.
These issues waste valuable time and increase litigation risk.
4. Credibility Before the Board
PTAB judges are highly technical and accustomed to examining expert testimony line by line. Unlike juries, they bring a patent-specific lens to every argument. As a result:
- Weak or generic testimony is quickly disregarded.
- Experts without prior PTAB experience may struggle to adapt their writing style or oral testimony to the forum.
- Judges have cited lack of credibility or insufficient explanation as reasons for rejecting expert declarations.
This means credibility is not just about credentials; it’s about demonstrating a track record in this specific venue.
5. Cost and Budget Uncertainty
Expert witness fees are among the most significant costs in PTAB proceedings, yet cost predictability is difficult to achieve:
- Rates vary widely, depending on technical specialization and prior litigation experience.
- Attorneys may struggle to benchmark reasonable costs without prior data.
- Clients increasingly demand transparency and efficiency in expert-related expenses.
Without clear expectations, budgeting becomes a source of friction between counsel and client.
Practical Solutions: How Attorneys Address These Challenges
While there is no single fix, attorneys can mitigate the above risks by:
- Building relationships with a broad bench of experts across technical fields.
- Prioritizing experts with proven PTAB track records over those with only academic credentials.
- Streamlining conflict checks early in the engagement process.
- Setting clear expectations on availability and cost before drafting begins.
But in practice, attorneys often lack the time and resources to build and maintain such a network on their own. That’s where technology and dedicated platforms can make a difference.
How Patexia Connect Helps PTAB Attorneys
Patexia Connect was built specifically to address the unique pain points of PTAB litigation. Our platform provides:
- A thoroughly screened expert network: Thousands of professionals across industries, many with direct PTAB experience.
- Case history and credibility insights: Profiles that include prior PTAB cases and testimony so that attorneys can assess the track record before engagement.
- Conflict and availability tools: Streamlined checks to reduce wasted time.
- Centralized communication: One hub for managing documents, timelines, and collaboration with experts.
- Transparency in cost and scope: Clear information that helps firms and clients manage budgets effectively.
By leveraging Patexia Connect, PTAB attorneys gain speed, reliability, and confidence when securing expert witnesses. Instead of scrambling under tight deadlines or risking credibility at trial, they can focus on building the strongest possible petition or response.
Ready to strengthen your next PTAB case with the right expert? 👉 Discover Patexia Connect and see how we can help you find, screen, and manage experts with confidence.
