November 29, 2014

PTAB Orders Halt to “Speaking” Objections in Deposition

By Matthew L. Cutler, Principal

The Board continues to strongly enforce its regulations regarding the behavior of attorneys defending depositions in inter partes review proceedings. In an order entered in both Medtronic, Inc., Medtronic Vascular, Inc., and Medtronic Corevalve, LLC, v. Troy R. Norred, M.D., IPR2014-00110 and IPR2014-00111, the Board addressed improper speaking objections during a deposition by Patent Owner’s counsel.

Throughout the deposition, Patent Owner’s counsel interposed allegedly improper objections during deposition of its expert witness. Per the Office Patent Trial Practice Guide, and consistent with the Federal Rules of Civil Procedure, “speaking” objections and coaching of witnesses in proceedings before the Board are prohibited.  Cross-examination testimony should be between the lawyer and witness, with no input on questioning and answering during the testimony from other sources. Order at 2.  Further, an objection must be stated in a concise, non-suggestive manner and limited to a single word or term.  For example, proper objections in a deposition would be “Objection, form”; “Objection, hearsay”; and “Objection, relevance.” Id. at 2

Patent Challenger presented an exemplary objection by Patent Owner’s counsel which began “Objection, misleading…” and continued on to a detailed explanation that the question was misleading because it required the witness to make a conclusion based only on a portion of a patent which supposedly was taken out of context. The Board agreed with Patent Challenger that the objection was improper, as it may have helped the witness formulate an answer or otherwise coached the witness. Id. at 3.

Chatty defending attorneys beware, the Board has been clear that speaking objections will not be tolerated. In this case, the Board cautioned that further violations may warrant sanctions, including exclusion of the primary declaration testimony from the witness being deposed. Order at 3.