By Matt Johnson

The Patent Trial and Appeal Board’s Trial Practice Guide, 77 Fed. Reg. 48756, includes discussions of types of discovery that may come into play in post-grant trials, including the possibility of live testimony. The Guide states that “[d]iscovery is a tool to develop a fair record and to aid the Board in assessing the credibility of witnesses.” The Board seeks to regulate discovery so that it is “focused on what the parties reasonably need to [litigate] the grounds raised” and no more in order to “streamline the proceedings” and limit burdens placed on the parties.

Though not often discussed, the Guide includes provisions directed to the presentation of live testimony in front of one or more of the administrative patent judges assigned to a case. The Guide states that:

Cross-examination may be ordered to take place in the presence of an administrative patent judge, which may occur at the deposition or oral argument. Occasionally, the Board will require live testimony where the Board considers the demeanor of a witness critical to assessing credibility. Examples of where such testimony has been ordered in previous contested cases before the Board include cases where derivation is an issue, where misconduct is alleged to have occurred during the proceeding, or where testimony is given through an interpreter.

Trial Practice Guide at 48762.

The Board envisions that live testimony will be necessary only in limited circumstances and intends to approach requests for live testimony on a case-by-case basis. K-40 Elec., LLC v. Escort, Inc., IPR2013-00203, Paper 34 at 3, (May 21, 2014); see also 81 Fed. Reg. 18750, 18760 (Apr. 1, 2016) (“. . . the Office noted that it will continue its present practice of considering requests for presentati[on] of live testimony in an oral hearing on a case-by-case basis, but the Office does not expect that such live testimony will be required in every case where there is conflicting testimony.”). Though rare, the Board has, on occasion allowed live testimony. See K-40 Elect., IPR2013-00203 (permitting live cross-examination of inventor at oral hearing).

In South-Tek Systems v. Engineered Corrosion Solutions, IPR2016-00136, the Board denied the Patent Owner’s request to have their expert testify for 10 minutes at the oral hearing. The Patent Owner argued that the “live testimony [was] needed because Petitioner[] attacked [the expert’s] credibility on the issue of long felt need.” A party requesting that their own declarant testify live, in contrast to the usual request to cross-examine the other side’s declarant, is out of the norm. This may have contributed to the Board’s decision that having the expert testify would not be helpful for the resolution of the proceeding and denying the request.

While the denied request is not particularly surprising, the motion denial highlights an interesting factor that this panel thinks would cut toward granting a live testimony request. The decision includes significant discussion as to how they might consider live testimony of a fact witness, instead of an expert, more helpful to their decision making. The Board stated that “[t]he credibility of experts often turns less on demeanor and more on the plausibility of their theories.” The panel noted that a witness’ demeanor is more helpful in considering fact witness testimony, citing to language from a 2009 Federal Circuit decision that notes “[a] trial court makes a credibility determination in order to assess the candor of a fact witness, not to evaluate whether an expert witness’ medical theory is supported by the weight of epidemiological evidence.”

Takeaway

This motion denial hides an interesting tidbit that the Board is more likely to grant a request for live testimony that involves fact witnesses, compared to expert witnesses. Expert testimony plays a part in almost every PTAB case. In contrast, most PTAB post-grant trials will not involve fact witness testimony. But, in cases that do (e.g., cases that involve attempts to “swear behind” a prior art reference), parties should consider how the introduction of live, fact witness testimony at the oral argument might be beneficial to presenting a persuasive case

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 225 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.