Patent Owner Tip #1 For Surviving An Instituted IPR: Approach IPR Depositions Like A Cross-Examination
As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts. But approaching an IPR deposition like a typical litigation deposition could be a big mistake.
Unlike a typical litigation deposition, where one thoroughly probes a witness on all relevant issues to gain a better understanding of what the deponent knows, an IPR deposition needs to be treated more like a cross-examination at trial. This is because the IPR witness has already provided his or her testimony in the IPR through a declaration and, under normal circumstances, the witness will typically not be allowed to provide additional testimony to bolster the Petitioner’s arguments—that is, unless that additional testimony is provided during the deposition. Therefore, when deposing a witness in an instituted IPR, it is important to strike a delicate balance between undermining the opposing side’s arguments and opening the door and allowing the declarant to bolster their prior testimony.
So when deciding whether to broach a topic in a deposition, you should weigh the potential risks versus the potential rewards. The risk of the potential damage that can be caused by probing certain topics should be weighed against the potential gains. Here are 3 keys to adhere to when approaching a deposition in an IPR:
1. Know what you have. Before the deposition, you should already have your response drafted. At this point you should be familiar with the strengths and weaknesses of your arguments. Based on the entire record thus far, you should know that there are particular parts of the declarant’s prior testimony that help your arguments in some way, and there is no reason to risk giving the declarant an opportunity to bolster an argument, or provide testimony for something that was left out of their earlier testimony. These topics should probably be avoided during the deposition because there is little to be gained.
2. Know what you should stay away from during the deposition. In some situations, there will be areas of your drafted response that already have strong arguments, and the risk of allowing the deponent to fix something in their prior testimony (or lack thereof) and undermining your arguments is too great. These situations also should be avoided in the deposition.
3. Know what you absolutely need. There will be times when the opposing party has strong arguments, and the arguments in your drafted response have issues that will need to be addressed. The only way to address these issues is to take them head on and raise them during the deposition. The potential gain of the deponent providing some inconsistent testimony outweighs any risk of them strengthening their arguments. In these situations, there is nothing to lose, so these issues should be the focus of the deposition.
Following these 3 keys will lead to successful IPR depositions.