NEWSLETTER ARCHIVE
Volume 49, Issue 1
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Editor
Since 2012, the America Invents Act has transformed the patent litigation landscape, largely through the creation of post-grant trials before the USPTO’s Patent Trial and Appeal Board (“PTAB”). Typically limited to 12 months, post-grant trials require rapid scrutiny and adherence to a complex web of statutes, rules, and other guidance. Due to limited opportunities for discovery and the need to persuade tech-savvy judges who often pore over every shred of evidence, depositions are crucial. To make the most of them, deposition counsel must be familiar with PTAB-specific authority.
This update provides a brief overview of that authority, which we recently detailed in two articles for BNA’s Patent, Trademark & Copyright Journal. The first article explains key aspects of planning the PTAB deposition (http://bit.ly/2F3cpvU), and the second focuses on navigating the deposition once it begins (http://bit.ly/2DtpimG). Together, these insights form a comprehensive guide that will arm counsel with knowledge of applicable authority and the nuanced body of caselaw that has emerged over the first five years of post-grant trials, as introduced herein.
I. Planning Depositions
Parties typically have the right to cross-examine declaration testimony prepared for the post-grant proceeding. If they are not provided that opportunity, the PTAB may give the underlying testimony little or no weight. The PTAB has shown flexibility with scheduling, but parties should pay attention to scheduling orders and generally aim to complete depositions more than a week before filing related papers that rely on deposition testimony. Deposing counsel should also give proper notice to the PTAB, which often prefers to resolve deposition disputes in real time.
Typically, counsel may conduct depositions at any reasonable time and location in the U.S. The default time frames for cross-examination, redirect, and re cross are subject to change by stipulation, and the PTAB has discretion to modify them if the parties disagree. The PTAB may also intervene if the parties cannot agree on a location. Depending on the scope and nature of the declaration testimony at issue, the PTAB may not require declarants located abroad to travel to the U.S. Regardless of where depositions occur, the PTAB has established guidelines for conducting them in a foreign language. If interpretation will be necessary, deposing counsel should be given advance notice.
Counsel may also wish to arrange a videographer to preserve evidence of the deponent’s (or opposing counsel’s) conduct and credibility. Before making such arrangements, counsel should seek consent from its adversary or, if the parties cannot agree, authorization from the PTAB itself. Ideally, the party lodging the request will have previously mentioned it in the list of proposed motions filed before the parties’ initial conference call with the PTAB. In any event, additional authorization is required before either party can actually present deposition video to the PTAB.
II. Conducting Depositions
PTAB rules provide for cross-examination within the scope of direct testimony, but the PTAB generally allows some leeway as long as questioning is reasonably related to the underlying declaration. If the parties have a dispute about the scope of questioning, the deposition may be suspended for however long it takes to obtain a ruling on the dispute. Questions directed toward impeachment may rely on the witness’s prior inconsistent statements, but substantive questions about prior testimony may constitute additional discovery, which requires PTAB authorization. Aside from exposing weaknesses in declaration testimony, counsel may use the deposition to probe for evidence supporting a request for additional discovery (e.g., confirmation that something useful will be uncovered by the information sought).
Since the party advancing a witness will typically have little chance to explain or correct cross-examination testimony, its counsel should remain vigilant during the deposition. Among other things, they should be prepared to object timely and properly to unfair questioning and exhibits, to instruct the witness not to answer if privilege is at stake, and even to suspend the deposition pending any necessary intervention from the PTAB. Of course, there are right and wrong ways to do all of these things, and the highly efficient PTAB has little tolerance for ignorance of forum-specific rules and customs.
III. Conclusion
The first five years of post-grant trials have highlighted many stumbling blocks that can trip up counsel on either side of the deposition table, including some issues that may surprise even seasoned district court litigators. While there is no substitute for familiarity with the statutes, rules, caselaw, and other guidance governing PTAB deposition practice, our recent articles in BNA’s Patent, Trademark & Copyright Journal provide a comprehensive guide that will help litigators learn the ropes on this vital topic.
Learning the Ropes of PTAB Depositions
Michael A. Stramiello & Arvind Jairam, Paul Hastings LLP.
Michael A. StramielloArvind Jairam
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