November 6, 2014

Motion for Observation of One’s Own Witness Not Allowed in IPR

By Matthew L. Cutler, Principal

In developing the procedures for inter partes reviews, the Patent Office pulled out a rarely-used legal concept called a Motion for Observation Upon Cross-Examination. Used in IPR proceedings to allow a party to direct the PTAB’s attention to cross-examination testimony when there is no other briefing available to the party, it is worth noting some of the contours of this procedure, as it is developed through the Board’s decisions. In Scott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358, the Board denied Patent Owner’s attempt to file such a Motion for Observation on the cross-examination testimony of its own witnesses. Paper 77 at 2.

Patent Owner argued that a Motion for Observation of its own witnesses was appropriate because Petitioner mischaracterized the testimony of these witnesses. Id. at 2. For example, it was argued that Petitioner summarized the witnesses’ testimony incorrectly and cited certain portions of the deposition transcript but failed to cite other portions that allegedly contradict the cited portions. Id. at 2. Patent Owner argued that it was prejudiced because no other substantive paper could be filed to address the alleged mischaracterizations or otherwise bring them to the Board’s attention. Id. at 2.

The Board denied authorization to file a motion for observation on cross-examination because the rule allowing such observations is directed to the party taking the cross-examination. Id. at 3. The Board found it inappropriate to allow a party to file observations on the cross-examination testimony of its own witnesses. Id. All was not lost for the Patent Owner, however, as the Board offered two lifelines.  First, the Board stated it would review the testimony cited by Petitioner in context to determine whether Petitioner’s arguments about that testimony are correct, and thus there is no need for a motion for observation on cross-examination. Id. at 3. Second, the Board instructed that, while oral hearing is not an opportunity for a party to expand upon testimony in a manner not already presented, Patent Owner is allowed to cite other portions of the witnesses’ testimony at oral hearing to demonstrate that Petitioner’s characterization of the witnesses’ testimony is incorrect. Id. at 4.