By Matthew L. Cutler, Principal
As more IPR proceedings wind their way through the discovery phase, issues relating to depositions are starting to pop up in PTAB decisions. Here, we take a look at some recent Board decisions that help clarify those issues in inter partes review trials.
Disputes During a Deposition and Instructions Not to Answer
Corning Inc. v. DSM IP Assets B.V., 2013-00043 (Paper 31). Counsel for the parties called the Board during a deposition. At issue was an instruction by Petitioner’s counsel that the witness not answer questions deemed outside the scope of the deposition. The Board held that such instructions were only proper when made to preserve a privilege, to enforce a limitation ordered by the Board, or to present a motion to terminate or limit the testimony. Office Patent Trial Practice Guide Appendix D: “Testimony Guidelines,” 77 Fed. Reg. 48756, 48772.
Videotaping Deposition Testimony
Atrium Medical Corp. v. Davol Inc., 2013-00184 (Paper 24). In the initial conference call, Patent Owner requested authorization to take video taped testimony of Petitioner’s expert. The Board explained that the parties may agree among themselves to take video testimony, but authorization is required to actually submit it in the proceeding. 37 C.F.R. § 42.53(a). In the event that authorization is sought, the requesting party must explain to the Board the reason why the testimony should be reviewed because the Board will only view testimony if a party has demonstrated a specific reason or need for the Board to do so.
Request to Submit Videotaped Testimony
Corning Inc. v. DSM IP Assets B.V., 2013-00043 (Paper 41). Patent Owner requested that a total of 60 minutes of deposition testimony be submitted to the Board for two depositions that covered a total of 9 days. Given the limited amount of testimony being submitted, the Board found the request to be reasonable. The Board also noted that such video testimony must be submitted in MPEG format in excerpts that do not exceed 25 MB.
Ariosa Diagnostics v. Isis Innovation Ltd., 2012-00022 (Paper 67). The Board issued an order after a conference call in which the Board and parties discussed the ground rules for a foreign deposition. The Board’s guidance included: 1) ensuring the witness can be properly sworn in before the deposition (i.e., through an appropriate consular official); 2) voir dire of the interpreter, to ensure they have proper qualifications, should be the exception not the rule – parties should resolve such issues prior to the deposition; 3) the interpreter can converse with the witness about any testimony, to ensure an accurate translation, but the parties will be able to voir dire the interpreter regarding any such conversation; and 4) the same interpreter may be used in the deposition and to prepare the witness because opposing counsel can have a “check” interpreter to raise any issues as to the interpretation of any answer.
Scope of Cross-Examination
Micron Tech., Inc. v. Board of Trustees of the Univ. of Ill., IPR2013-00005. Patent Owner requested guidance from the Board regarding whether it could ask Petitioner’s expert questions regarding grounds of unpatentability that were not included as the basis for instituting the IPR trial. The Board instructed that cross-examination is limited to the scope of direct examination. Despite that fact, inquiry into topics from the expert’s testimony that deal with grounds upon which the trial was not instituted may be appropriate. To the extent there is disagreement, the Petitioner can object to the questions and such testimony will be subject to a motion to exclude at a later date.
Format of Video Evidence
McClinton Energy Grp., LLC v. Magnum Oil Tools Int’l, Ltd., IPR2013-00231 (Paper 7). Petitioner mailed to the PTAB a DVD that contained a video file that was listed as an exhibit to the Petition. DVD videos are not, however, proper. Only MPEG videos should be submitted and should be uploaded in PRPS.
Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC IPR2012-00001 (Paper 50). Patent Owner filed errata sheets regarding the deposition of the patent’s inventor and expert and the Board provided guidance on such practice. In general, the rules do not provide for the filing of errata sheets. Before filing such a sheet, therefore, the party seeking to have it entered must contact the Board and seek authorization before doing so. 77 Fed. Reg. 48612, 48642. The Board found that the errata sheets undisputedly altered the testimony of witnesses, and thus disallowed entry of the errata sheets. The Board went on to “take this opportunity to state that unless unopposed by the other party, a request to make a material change to the substance of cross-examination testimony is unlikely to be successful.”