May/June 2015
IP Litigator
Authored by Sean B. Bedford and Jason E. Stach
Patent litigators today need to understand the interplay between litigation in court and related invalidity proceedings at the US Patent and Trademark Office (PTO), such as inter partes reviews, covered business method reviews, and post-grant reviews (collectively, AIA Trials). It is commonplace for accused infringers to seek invalidity review at the PTO, and PTO statistics show that approximately 80 percent to 90 percent of AIA Trials involve patents in related litigation. By now most litigators have confronted at least one case in which a patent in litigation also is subject to review at the Patent Office. It generally is a good practice to hire specialized AIA Trial counsel to capitalize on the substantive and procedural differences in those proceedings. Even if a client hires specialized counsel, however, court litigators will benefit from understanding the differences between AIA Trials and court proceedings because this understanding can lead to more effective collaboration between the court and AIA Trial teams. If a court litigator ends up representing a client in an AIA Trial, knowing the nuances specific to AIA Trials will be crucial to representing the client well.
Taking depositions is one area of an AIA Trial that might feel familiar to court litigators, but depositions in AIA Trials have significant strategic and procedural differences when compared to court depositions. Depositions can play a different role in AIA Trials, the strategy often is different from litigation-related depositions, and the mechanics of the deposition also differ from those employed in many district courts. Each is addressed below.
As in court actions, depositions can play a major role in AIA Trials. That role is enhanced, however, by the narrow scope of discovery in AIA proceedings. Unlike district court discovery, which is governed by the liberal provisions of Federal Rule of Civil Procedure 26, AIA Trial discovery often is confined to information inconsistent with a position advanced by a party, exhibits relied on in papers or testimony, and "[c]ross examination of affidavit testimony."1 Parties are permitted to expand the scope of discovery by mutual agreement, but when the parties disagree, additional discovery is permitted only on a showing "that such additional discovery is in the interests of justice."2 While the Patent Trial and Appeal Board (PTAB) has granted additional discovery more frequently lately, meeting the interests-of-justice standard can be a high bar to clear in some cases.3 Deposing an opposing party's affiants/declarants often is the only form of discovery a party receives in an AIA Trial.
Further enhancing the role of depositions in AIA Trials, the PTAB generally does not permit live testimony at its hearings. As of this writing, the PTAB has authorized live hearing testimony only once.4 If a witness does not provide the necessary or desired testimony via affidavit or deposition, there usually is no other vehicle for providing that information to the Board. The lack of live testimony also means there is no second chance for a witness to clarify ambiguous statements or supplement the deposition testimony. Witnesses often have a second chance in court proceedings because, after their deposition, they may testify again live before a factfinder. Although the PTO is considering new rules that might allow live testimony at more hearings,5 to date this opportunity has been so rare in AIA Trials that counsel should plan as though it does not exist. To the extent possible, witnesses should be prepared to present complete, accurate, and unambiguous testimony the first time.
The limits on discovery and testimony compel different strategies in AIA Trials from those in court. In a court-related deposition, the deposing attorney often will try to learn as much from the witness as possible, attempting to learn what story the witness may tell a judge or jury. Even if the deposing attorney fails to cover a topic at the deposition, the witness might still raise the topic at trial. Thus, it usually is in the deposing attorney's best interest to cover as much ground as possible in the deposition.
In an AIA Trial deposition, however, if the deposing attorney chooses not to cover a topic and that topic has not otherwise been addressed in the witness's affidavit or declaration, the witness's testimony on that topic might never be heard. Consider the situation where an AIA Trial petition and an accompanying expert declaration contain a deficiency, such as not fully explaining where a claim element is shown in a prior art reference. Over the patent owner's objection, the PTAB institutes the proceeding. The patent owner now needs to decide how to approach the expert's deposition. If the patent owner asks about the deficiency, the witness may fill the gap in the petition by explaining where the feature is found in the prior art. In fact, the witness would likely welcome the opportunity to do so. If the patent owner does not ask about it, however, the deficiency remains in the record and may serve as a basis for finding in favor of the patent owner.
The petitioner's counsel might try to fill the gap on redirect at the deposition, but the scope of redirect in an AIA Trial deposition is confined to the scope of cross-examination.6 If the petitioner tries to introduce new opinions or evidence without the patent owner opening the door, the PTAB may exclude that testimony or decline to rely on it. The petitioner also may attempt to fill gaps in the petition by providing a new declaration with a reply brief. The PTAB has taken a negative view of offering new opinions and evidence in a reply,7 but if the PTAB allows it, the patent owner will be able to separately depose the declarant on the new topics.8
As this scenario demonstrates, less is sometimes more in an AIA Trial deposition. Determining whether not asking questions is the best strategic move will require careful analysis of the facts of the case, the evidentiary exclusion tendencies of the PTAB generally and, perhaps more importantly, of the specific PTAB members hearing the case, and an analysis of the tendencies of the opposing party and their counsel.
Many mechanics of an AIA Trial deposition will be familiar to most court litigators, but there are some differences. When seeking to cross-examine an adversary's witness, the requesting party must file and serve a deposition notice at least 10 days before the deposition.9 The notice is more akin to a personal deposition notice under Federal Rule of Civil Procedure 30(b)(1) than a corporate notice under Rule 30(b)(6). It does not identify deposition topics, and in AIA Trials there is no standard mechanism for issuing a Rule 30(b)(6)-like notice that specifies topics for cross-examination.10 Instead, the scope of cross- examination is limited to the scope of the direct testimony given in the witness's affidavit or declaration.11
When defending AIA Trial depositions, attorneys may lodge only limited objections. Similar to the rules adopted in many district courts, the Office Patent Trial Practice Guide states that "unnecessary objections, 'speaking' objections, and coaching of witnesses in proceedings before the Board are strictly prohibited."12 In enforcing the rules on objections, the PTAB has stated that "counsel must not make objections or statements that suggest an answer to a witness and objections should be limited to a single word or term."13 An attorney who runs afoul of these restrictions may be subject to "sanctions including, but not limited to, exclusion of the primary deposition testimony from the witness being deposed."14
The PTAB also has emphasized the importance of lodging objections, notwithstanding the considerable restrictions placed on them. To challenge or exclude an opponent's line of questioning, "[a]n objection to the admissibility of deposition evidence must be made during the deposition, unless the parties to the deposition stipulate otherwise on the deposition record."15 Failing to lodge an objection at the appropriate time may later result in the Board denying a motion to exclude.16
The limited scope of AIA Trial discovery enhances the importance of good deposition strategy and execution. As the examples above demonstrate, AIA Trial depositions present different strategic and procedural considerations than those presented in litigation-related depositions. Knowing the distinctions addressed in this article, in addition to the many distinctions not addressed here, is crucial to effectively representing a client in an AIA Trial. Clients should ensure that their counsel is well-versed in AIA Trials to take advantage of the opportunities and avoid the potential pitfalls uniquely found in those proceedings.
Endnotes
1 37 C.F.R. § 42.51(b)(1).
2 37 C.F.R. § 42.51(b)(2).
3See, e.g., Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 26 at 6-16 (P.T.A.B. Mar. 5, 2013).
4 See K-40 Elecs., LLC v. Escort, Inc., IPR2013-00240, Paper No. 37 at 2 (P.T.A.B. Sept. 29, 2014).
5 PTAB's Quick-Fixes for AIA Rules Are to Be Implemented Immediately, PTO Director Michelle Lee's blog at http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for (last visited Apr. 15, 2015).
6 See Corning Gilbert Inc. v. PPC Broadband, Inc., IPR2013-00346, Paper No. 48 at 4-5 (P.T.A.B. June 23, 2014) (ordering petitioner to identify which cross-examination questions justified the introduction of testimony on redirect).
7 See, e.g., Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper No. 32 at 5-7 (P.T.A.B. Oct. 13, 2014).
8 "Office Patent Trial Practice Guide," 77 Fed. Reg. 48759, 48767 (Aug. 14, 2012).
9 37 C.F.R. § 42.53(d).
10 37 C.F.R. § 42.53(d)(5)(i) does require a "general description of the scope and nature of the testimony to be elicited," but this applies only to direct deposition testimony, not cross-examination deposition testimony.
11 37 C.F.R. § 42.53(d)(5)(ii).
12 "Office Patent Trial Practice Guide," 77 Fed. Reg. 48759, 48772 (Aug. 14, 2012).
13 Finjan, Inc. v. FireEye, Inc., IPR2014-00344, Paper No. 27 at 4 (P.T.A.B. Sept. 18, 2014) (emphasis in original).
14 Medtronic, Inc. v. Norred, IPR2014-00110, Paper No. 23 at 3 (P.T.A.B. Oct. 8, 2014).
15 37 C.F.R. § 42.64(a) (emphasis added).
16 See Skyhawke Techs., LLC v. L&H Concepts, LLC, IPR2014-00437, Paper No. 27 at 2 (P.T.A.B. Apr. 2, 2015).
Reprinted with permission from the IP Litigator, published by Wolters Kluwer. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.