Publications

PTAB AIA Proceeding Deposition Strategy

Bylined Articles
Sterne, Kessler, Goldstein & Fox

Depositions are an important, yet sometimes overlooked, part of AIA proceedings, such as inter partes review (“IPR”) trial proceedings. It is important to understand that IPR depositions differ in significant ways – both in procedure and utility – from district court depositions, including strict time limitations. Understanding the procedures and goals of IPR depositions is important for maximizing their effectiveness. To that end, we will describe IPR deposition goals, how those goals might be affected by SAS (SAS was fully addressed in the May newsletter), and unique procedural aspects of IPR deposition rules.

IPR Deposition Goals and Strategy

In district court litigation, depositions are used to gather information that will be used against an expert during cross examination in court. But in an IPR, a witness (usually an expert having provided a declaration) will almost certainly not testify at the oral hearing. So the deposition is likely the only opportunity to engage with the witness and discredit their testimony for the Board. But discrediting the witness must be weighed against allowing the witness to fill in gaps or fix their written declaration testimony. Given the limited amount of time for the deposition, this opportunity must be used wisely. This means having a strategic plan for covering only the portions of the witness’s declaration that are most likely to benefit your arguments.

First, it is not necessary to address every paragraph of the witness’s declaration. Unlike a deposition in district court litigation, where the goal is often to gather as much information as possible, an IPR deposition is typically much more targeted. For example, while it is important to probe the witness’s background and qualifications to some extent, this exercise is often fruitless for the merits of the case, as the vast majority of witnesses are well-qualified. Unless there is a specific reason identified in advance of the deposition to question a witness’s qualifications, and thus credibility, the limited deposition time is typically better spent on addressing the technical merits of the witness’s declaration. This is not to say that the witness’s background and qualifications should be ignored altogether, but rather that the time for this line of questioning should be properly allocated.

Second, in questioning a witness’s positions on the technical aspects of the case, it is important to identify positions, where, if the witness’s opinion is shown to be flawed it may be case-dispositive. Highlighting inaccuracies on minor technical points may help impeach a witness’s credibility, but are unlikely to win the case. But if it is possible to point out that a witness’s interpretation of a technical feature is incorrect, it may mean, for example, that the prior art does (or does not) teach an element of the claim. Further, while most witnesses are familiar with the technical aspects of the patent and prior art, they may be less familiar or prepared regarding some of the legal concepts, such as the motivation to combine references. This may be an effective way to damage the strength of the combination, for example, if the witness offers a conclusory premise for combining the references, rather that providing a well-articulated reason or explaining how the combination would work to yield predictable results. These are the types of acknowledgements that can bolster an argument in a Patent Owner Response or Petitioner Reply, or provide a powerful aid at the oral hearing in the form of a deposition transcript excerpt on a demonstrative slide. Because IPRs sometimes become a battle of the experts, having a damaging quote from a witness to present to the Board might just tip the case in your favor.

Third, understanding the types of issues upon which to question a witness also includes considering which issues not to explore. In some cases, it may be beneficial to avoid questioning the witness about weaknesses in their declaration because it can prevent the witness from supplementing a weak point during the deposition. And because the scope of the re-direct examination in an IPR is limited only to the scope of the cross-examination, the opposing party will not have the opportunity to further supplement the record on that potentially weak position. To that point, the party defending the witness should prepare the witness to look for opportunities to supplement potentially weak positions of their declaration testimony, if doing so would be useful. And the defending counsel must use their re-direct examination effectively, since the deposition transcript is usually the last opportunity to clear up any ambiguities or weaknesses in the witness’s testimony.

Post-SAS Deposition Considerations

The third point above is particularly relevant in view of SAS. For example, it may be the case that a proceeding is situated such that the Board initially denied a subset of claims or grounds, but has since issued an order including all claims and all grounds. The Patent Owner likely considers themselves as having the advantage on these claims or grounds. Thus, if the Petitioner’s witness has not yet been deposed, it may be wise to avoid asking any questions about the newly instituted claims or grounds to avoid providing the witness the opportunity to supplement the record with additional testimony about their merits. With this approach, it would be improper for the defending counsel to question the witness about these claims or grounds on re-direct because it would be outside of the scope of the cross-examination. On the other hand, the Petitioner should consider what testimony might be useful for the witness to provide, should they be asked about previously non-instituted claims or grounds, and prepare the witness accordingly.

From the Petitioner’s perspective, if the proceeding is situated such that the Patent Owner Response includes a declaration addressing the previously non-instituted claims or grounds, the Petitioner must decide how much to focus on these claims or grounds. If there are issues that the Board overlooked upon initial institution, the deposition may provide an important opportunity to point this out. This may be particularly important where no originally instituted ground covered a particular claim. But, for example, if the Petitioner perceives that there is too much ground to be made up and all of the challenged claims are covered under an originally instituted ground, the limited deposition time may be better spent focusing on those grounds rather than what may be a lost cause.

Deposition Procedure

Finally, we want to highlight two procedural differences between AIA and district court depositions.[i]

Objections: An objection must be made promptly on the record, or it is waived. (37 C.F.R. § 42.53(f)(8).) The Trial Practice Guide notes that “speaking objections” and coaching the witness are strictly prohibited. (77 Fed. Reg. 48772.) Counsel may, however, instruct a witness not to answer a question if necessary to preserve a privilege. (77 Fed. Reg. 48772.)

Discussions during deposition: An important distinction from some district court jurisdictions is that witness’s counsel is prohibited from conferring with the witness about the substance of testimony given or expected to be given. (77 Fed. Reg. 48772.) This is contrary to some district court jurisdictions that allow conferring with a witness, for example, during a pre-scheduled break. Therefore, the party taking the deposition may want to inquire about discussions between counsel and the witness that occurred during a break. Notably, at least one Board panel found that the prohibition on conferring with the witness applies only during cross-examination and not to the period of time after cross-examination but before recross-examination. (See IPR2013-00290, Paper 21, p. 3 (discussing 77 Fed. Reg. 48772).) This presumably means that counsel may confer with the witness prior to re-direct examination. However, at least one Board panel suggested that coaching a witness between cross-examination and re-direct may not be permissible, but that any objection to coaching is waived if not raised during the deposition. (IPR2014-00411, Paper 45, pp. 5, 7-8.)

Conclusion

In the end, you need to prepare thoroughly to focus the deposition on what you need from the testimony to win your case, while preventing the opposing party from supplementing the record with evidence that may do the same for them.

[i] 37 C.F.R. §§ 42.51-53 and the Board’s Trial Practice Guide (77 Fed. Reg. 48756-48773) provide a succinct overview of IPR deposition practice.


This article appeared in the June 2018 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.