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
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."
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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Though politics ruled the headlines in 2016, the year still brought big changes in intellectual property law and its application, most notably in patent subject matter eligibility, inter partes review institution and appeal and design patent damages.
Chanel, a billion-dollar fashion company that produces and sells luxury consumer products, identifies its products by the "Chanel" trademark and the "CC Monogram" trademark, which consists of two interlocking...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).