Inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent Trademark Office (USPTO) are similar in some ways to traditional patent trials in district courts, and they are different in other ways. Unlike patent trials in federal court which are conducted before a judge and/or jury, IPR trials are conducted before a panel of administrative law judges and focus mainly on written testimony rather than live testimony or prerecorded video testimony. A recent PTAB ruling (paper #23 in IPR2014-00878, available at https://ptabtrials.uspto.gov/) highlights some of the issues regarding the use of video testimony in IPRs and serves as a reminder regarding the importance of preparing an expert well for an IPR deposition.
In an IPR proceeding, "[p]arties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board." 37 C.F.R. § 42.53(a). In IPR2014-00878, the petitioner took the deposition of the patent owner's expert regarding U.S. Patent 8,227,969. The petitioner then filed a motion to submit portions of the expert's video-recorded testimony from that deposition as well as video-recorded deposition testimony of the same expert from another IPR (IPR2014-00879) regarding another patent. The petitioner sought to introduce the video-recorded testimony from the two depositions in order for the PTAB to assess the demeanor and credibility of the patent owner's expert. In its motion, the petitioner described several specifically-identified excerpts of video testimony and included the time duration of each excerpt. The petitioner argued that in some of the excerpts, the patent owner's expert gave overly complicated or incomprehensible answers to questions or had a demeanor that called into question his credibility.
The PTAB agreed with the petitioner that video excerpts of the expert's testimony may be helpful in reaching a final determination. Therefore, the PTAB allowed the petitioner to submit five specifically-identified excerpts of video testimony from the deposition in IPR2014-00878, not to exceed 34 minutes in length total, as exhibits along with the petitioner's Reply. Notably, the PTAB did not allow the petitioner to submit video testimony of the expert from the other IPR proceeding.
The motion and Order in this case are instructive regarding the procedures for submitting video-recorded testimony for consideration by the PTAB. This case is also a reminder of the importance of preparing an expert well for an IPR deposition. Just as in district court litigation, the demeanor and non-verbal expressions of a deponent are major considerations that can be as significant as what the deponent actually says.
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