Precedential: Live Testimony Not Permitted Absent Prior Declaration

by | Apr 1, 2019 | PTAB Trial Basics

By Kenny Luchesi

In a recent decision that the PTAB designated as precedential, the Board denied a patent owner’s request to provide live testimony from the inventor of the challenged patent at the oral hearing.  In DePuy Synthes Products, Inc. v. MedIdeam LLC, Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29), the patent owner sought permission from the Board to have the inventor “address the panel” at the oral hearing.  The patent owner never fully explained how the inventor would address the panel, or what he might say, but the Board noted that the inventor had not provided any declaration testimony in the proceeding, and was not listed as counsel of record.  Citing the Office Patent Trial Practice Guide (77 Fed. Reg. 48,756, 48,768), the Board determined that under these circumstances, any testimony provided by the inventor at the oral hearing would constitute new evidence—which is forbidden—and thus denied the patent owner’s request.

Although the request in this case was for testimony from the inventor of the challenged patent, the PTAB’s designation of this decision as precedential likely signals that the Board will not consider any requests for live testimony from anyone that has not submitted a declaration in the proceeding and is not listed as counsel of record.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.