Metro Detroit patent litigator Glenn Forbis recently spoke to Law360’s Matt Bultman about a number of key differences between taking depositions at the Patent Trial and Appeal Board (PTAB) and at district courts.
Importantly, matters held before the PTAB often involve highly technical concepts that can become the cornerstone on which a case rests, thereby elevating the role of the expert witness explaining those concepts.
The catch? The PTAB rarely allows live testimony at trial, forcing attorneys to question experts only during depositions.
With one chance to get it right (live testimony before the PTAB is very rare), Forbis recommends a strategy that is as focused as possible. He suggests thinking of it like cross-examination in a district court trial. It is not the time to test out theories or go on a “fishing expedition.” Instead, use the witness’s declaration as a guide and ask only questions that are relevant and attempt to attack the foundation of the witness’s opinions without opening the door for him/her to extend or further support them.
In patent litigation proceedings before district courts, witnesses will have the ability to clean up testimony or expand on certain views at trial. Finding weaknesses and forcing witnesses to fill in the gaps can be a strategic play.
At the PTAB, however, it can be better to leave those gaps alone and point them out to the board later. “What’s important is not to ask the broad questions that allow that witness to elaborate, support or enhance their existing opinions,” says Forbis. In other words, rather than allowing witnesses to go broad, keep them tightly focused on what you want them to explain.
Objections, like questions, also need to be focused if they are going to be raised. Patent litigation proceedings at the PTAB require attorneys to make objections during depositions because there will not be a chance to make them later. Furthermore, the PTAB looks down on lengthy objections.
Two important rules of thumb for making objections: “First of all, do not lose the opportunity to make an objection because you’ll waive it,” says Forbis. “Second, when you make your objection, say ‘objection’ and whatever the one-word reason is. ‘Objection relevance. Objection foundation.’”