Amended Rule Moves Focus to Admissibility

Back in April the Supreme Court approved changes to FRE 702 (Expert Witness Testimony) that will take effect on December 1st. These changes clarify that the preponderance of evidence standard controls the evaluation of expert testimony while also providing structural changes designed to refocus the trial court on admissibility.

Enhancing the gatekeeping function of the courts moves current practice away from erring on the side of admissibility. This also avoids fact finders needing to assign an appropriate weight where reliability is in question; such practices are especially confusing for juries.

But, what does the change to FRE 702 mean for declarant testimony at the PTAB?

First, Rule 702 as amended (effective 12/1/23):

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if the proponent
demonstrates to the court that it is more likely than not that

(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of
fact to understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert’s opinion reflects a reliable application of the principles and methods to
the facts of the case.

(amendments shown in underline)

The courts will undoubtedly see an invigorated Daubert practice going forward as litigants seek to capitalize on the refocused rule.

True “expert” testimony is commonplace in the district courts. For example, expert testimony in product liability or personal injury cases where expert conclusions are critical to the general fact finder. In patent litigation, infringement may turn on a complex technical conclusion of a technical expert, or damages can turn on the economic models of a damages expert. On the other hand patent validity is viewed from the perspective of a Person of Ordinary Skill In The Art (POSITA).

A POSITA need not qualify as an “expert.”

Most PTAB practitioners (myself included) loosely refer to their technical declarants as “experts,” but this is a misnomer. While most such declarants usually possess the qualifications of an expert, they are not offering expert opinions. Instead, PTAB declarants testify as to the scope and content of the prior art from the perspective of a POSITA.

POSITA testimony— especially in the predictable arts— follows no scientific principles or methods in assessing scope and content. Likewise, there are no “sufficient facts or data” akin to an economic model or what a forensic expert might apply in the district court. In the predictable arts especially, testimony on the scope and content of the prior art guides the agency in applying its own expertise. The reliability of that guidance (or lack thereof) is typically dictated by the completeness of the assessment, not the utilization of unscientific principles or methods. The expert agency is uniquely suited to make that assessment.

The rule could, theoretically, be leveraged in less common PTAB scenarios.

For example where testimony is offered that includes experiments, modeling, studies, and the like. In my experience such testimony is more likely in the unpredictable arts. Or, where a Patent Owner is offering objective indicia on market share or supporting economic testimony.

Still, even in these examples, I would be very reluctant to seek exclusion of a declaration outside of a truly exceptional case. Excluding evidence is strongly disfavored before an expert agency that utilizes no generalist jury or fact finders.