By Carl Kukkonen

The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination.  This clarification was in response to a request from the patent owner with regard to the PTAB Testimony Guidelines which state, in part:

Once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not: (a) consult or confer with the witness regarding the substance of the witness’ testimony already given, or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a Board order; or (b) suggest to the witness the manner in which any questions should be answered.

The order, which was made precedential on July 10, 2019, in particular, clarifies that the prohibition of conferring with the witness ends once cross examination concludes, and, if relevant, begins again when re-cross commences, and continues until re-cross concludes. The order further states that the prohibition does not exist, however, during the time frame between conclusion of cross examination and start of re-cross.

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An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.