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PTAB Clears Up Uncertainty Regarding the Rules on Conferring with a Witness During Inter Partes Review Depositions

Last week the Patent Trial and Appeal Board (“PTAB”) designated as precedential a decision from 2014, which found that counsel can confer with a deponent at the conclusion of cross examination and prior to redirect.  Through its designation of Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19 (P.T.A.B. July 21, 2014) as precedential, the PTAB has made clear that although counsel may not confer with a witness during the cross-examination portion of a deposition, counsel may confer with a witness after cross-examination has concluded but before the redirect portion of the deposition commences.  Thus, the PTAB expressly permits counsel to confer and discuss testimony with the witness that counsel intends to elicit from the witness on redirect.  This quirk of PTAB practice, where depositions are substitutes for in-court testimony, has implications on litigants’ PTAB strategy.

This issue was presented to the PTAB when Patent Owner, Senorx, Inc., sought guidance regarding the PTAB’s Testimony Guidelines (Appendix D of the August 12, 2012 Office Patent Trial Practice Guide) in connection with a dispute that occurred during the deposition of Petitioner, Focal Therapeutics, Inc.’s, expert. 

The clarification sought was centered on the following language provided in the Testimony Guidelines:

Once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not (a) consult or confer with the witness regarding the substance of the witness’ testimony already given, or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a Board order; or (b) suggest to the witness the manner in which any questions should be answered.

Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19, 2 (P.T.A.B. July 21, 2014) (“Slip Op.”) (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48772-48773, Appendix D (Aug. 14, 2012). 

In this case, after Patent Owner concluded the cross-examination of Petitioner’s expert, Petitioner initiated a private conference with the witness to discuss his redirect testimony.  Patent Owner subsequently sought guidance from the PTAB to determine whether this private conference was permissible under the Testimony Guidelines, asking whether the guidelines “apply only to the initial cross-examination of the witness, or apply to the entire deposition, which can of course include redirect as well as subsequent re-cross of the witness.”  Slip Op., at 2.   

The PTAB, relying on the express words of the Guidelines, held that they applied only to either cross-examination or re-cross, and not the entire deposition.  Slip Op., 3.  Thus, “[t]he prohibition of conferring with the witness ends once cross-examination concludes” and “[t]he prohibition does not exist … during the time frame between conclusion of cross-examination and start of re-cross.”  Slip Op., 3.  Counsel is therefore “permitted to confer with the witness before redirect examination begins.”  Id.

The PTAB further noted that the parties always have the option to confer before a deposition occurs, and agree among themselves, for example, that counsel may not confer with a witness until the conclusion of the entire deposition.

Deposition practice at the PTAB is different than deposition practice in Federal Courts and the ITC, with different rules that require different strategic decisions.  It is important for attorneys wading through the PTAB to be aware of the differences and plan accordingly.  The decision in Focal Therapeutics, now a precedential ruling, cements for counsel the ability to confer with a witness prior to redirect examination, which can be helpful in eliciting testimony critical to your case.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume IX, Number 196


About this Author

Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm

Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked as a database...

Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.