Unlike pre-grant patent prosecution, the submission of declaration evidence under 37 CFR 1.131/132 in patent reexamination is not only common, but the norm. This is due to the fact that there are no opportunities to continue patent reexamination via RCE as in pre-grant prosecution. Likewise, amending claims in patent reexamination is problematic as the Patent Holder may surrender past damages under the doctrine of intervening rights. Where a Patent Holder has invested significant time and money in enforcing their portfolio, intervening rights are of paramount concern. As such, convincing the USPTO of patentability without amendment typically requires more than attorney argument, hence the heightened importance of declaration practice in patent reexamination.
A threshold issue in patent reexaminations concurrent with litigation is whether or not the declarant should be the same expert who is expected to testify at trial, or a new expert retained for reexamination purposes only. This decision is affected by several factors, including the risk of two experts taking inconsistent positions and the likelihood that the declarant in the reexamination will be deposed.
Federal Rule of Civil Procedure 26(b)(4) normally operates to protect experts expected to testify at trial from being deposed until they have been identified to all parties and have submitted written reports pursuant to Rule 26(a)(2). The written reports, often referred to as an “expert reports,” contain all opinions the experts will express at trial. The Federal Rules of Civil Procedure do not specifically contemplate, however, the effect of declarations submitted in support of reexamination proceedings before the USPTO. If such declarations contain the experts’ opinions on the validity of the patents involved in reexamination, are the experts subject to being deposed in concurrent litigation involving the same patents?
Only “[t]o the extent that the witnesses are later identified as ‘testifying experts'” determined a magistrate judge in granting a protective order motion in the case of Roy-G-Biv v. Fanuc. Civil Action No. 2:07-cv-418 (E.D. Tex. Jul. 9, 2009). Reaching the same conclusion, the district court judge subsequently denied a motion for reconsideration of the protective order and expressly declined to “displace the normal protections of Rule 26(b)(4) and allow such depositions to take place prematurely.” In essence, the Court ruled that the mere submission of an expert’s declaration to the USPTO during reexamination does not satisfy the Rule 26(a)(2) requirement for a party to identify all experts who may be used at trial.
It follows from the Court’s logic, then, that an expert employed for both reexamination and the concurrent litigation can only be deposed after being identified as an expert expected to testify at trial. If it is desirable to shield from deposition an expert who prepares a declaration for reexamination proceedings, then counsel should retain separate experts for reexamination proceedings and trial.