Wednesday, June 9, 2010

Using credentials in an expert declaration

Takeaway: An expert declaration under § 1.132 should describe the declarant's background. The BPAI expects specific facts about the background rather than generalizations. The BPAI also expects the declaration to explain how the declarant's background and credentials qualify him as an expert on the subject matter at issue.

Details: The basic requirement for an expert declaration to include credentials was explained by the BPAI in Ex parte Sharpe and Ex parte Greksch. The declaration in Ex parte Greksch provided "no credentials of Declarant as an expert in intellectual property or, in particular, the standard for obviousness under 35 U.S.C. § 103." The Board therefore refused to "credit Declarant as an expert on the standard of obviousness under 35 U.S.C. § 103." In Ex parte Sharpe, the Board reached the same result, finding that the statements provided in the declaration were not "probative" because "the credentials of the declarant have not been provided in the Declaration."

The requirement for details about credentials rather than generalization was explained in Ex parte Gillespie:
Gillespie testifies that he has 24 years experience in the field of nonwovens fabric manufacture and melt spinning of synthetic polymer fibers. Declaration, ¶ 2. However, Gillespie does not state any educational background. Nor does Gillespie explain why his  background qualifies him to express opinions on the subject matter of his declaration. When a witness fails to properly qualify credentials, the fact finder in an ex parte context may properly decline to credit opinion testimony. Cf. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589-90 (1993) (fact finder must ensure that any and all scientific testimony and evidence is not only relevant, but reliable).
The requirement for an explanation of how the credentials qualify a declarant was discussed in Ex parte Kambe:
Dr. Singh has impressive academic and professional credentials. However, Appellants' statements that Dr. Singh is "an expert in the field of inorganic nanoparticles" (Br. 23) (bold omitted) and that he is "an expert in inorganic nanoparticle technology" (Br. 25) do not appear to be supported by Dr. Singh's resume where the only mention of nanoparticles is the listing of "nanoparticle synthesis and processing" under "Research Interests." If some of the papers, conferences, and consulting involve nanoparticle expertise or experience, this has not been pointed out by Appellants. ...  This paragraph does not say how Dr. Singh is familiar, by education or experience, with approaches to separating nanoparticles by filtration

No comments: