By Sue Gerber and Matt Johnson

Generally, the PTAB does not allow live testimony at oral argument, but recently it designated one of its 2014 decisions as precedential to give guidance as to when the Board will allow live testimony at oral argument.  K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (made precedential March 18, 2019).

In this case, the Patent Owner moved to present live testimony from the sole inventor of the challenged patent in order to antedate the only two references relied upon by Petitioner in its challenge to patentability.  The Petitioner objected, arguing that granting the motion would create a “de facto” rule permitting live testimony in all antedating disputes.  (Id. at 3.)  The Board disagreed, asserting it saw “no possibility that a ‘per se’ rule will result from granting the motion, or that as a result, granting requests for live testimony will become the norm rather than the exception.”  (Id.)  Years later, the Board’s prediction has proven to be true.  See, e.g., Johnson, Matthew, “Live Testimony Offered—Board Says “No, Thank You” (Feb. 11, 2017); see also Trial Practice Guide Update (August 2018), page 22 (“The Board receives relatively few requests for presenting live testimony.  …  The Board will consider such requests on a case-by-case basis, but does not expect to permit live testimony in every case where there is conflicting testimony.”)

The Petitioner also objected because it claimed that allowing the inventor to testify live would give the Patent Owner a “chance to ‘rewrite’ [unfavorable] testimony.”  (K-40, at 3.)  Again, the Board rejected that argument.  It explained that the scope of examination would be limited because only cross-examination and redirect is permitted.  (Id.)  Moreover, because the direct testimony was fixed in a previously-submitted declaration, it could not be changed and could be used to impeach the witness.  (Id.)

Finally, the decision lays out the factors that the Board will consider in determining whether to grant a request for live testimony.  First, “live testimony will be necessary only in limited circumstances and … requests for live testimony [will be approached] on a case-by-case basis.”  (Id.Second, the Board will consider “the importance of the witness’s testimony to the case, i.e., whether it may be case-dispositive.”  (Id.Third, the Board will assess whether credibility is an issue and will be more inclined to allow live testimony for fact witnesses rather than experts, whose credibility “often turns less on demeanor and more on the plausibility of their theories.”  (Id.)

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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 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.