Unavailability of IPR Witness for Deposition Undercuts Testimony

14661863_sTestimony from a witness in a prior reexamination, or other, proceeding may be useful information to a party in inter partes review proceedings. The party propounding such testimony should be prepared, however, to produce that witness for deposition in the discovery phase of the IPR, or the testimony may be given little or no weight by the Board. This scenario arose in Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc. IPR2013-00576, in the context of a Motion for Additional Discovery.

More specifically, the Petition included an expert declaration from a reexamination proceeding that related to the patent-at-issue. Petitioner relied upon the declaration testimony in the past and again in the instant proceeding. Order at 2.  In view of that testimony, Patent Owner filed a Motion for Additional Discovery seeking the deposition of the expert.

The Board denied Patent Owner’s Motion for Additional Discovery, finding that it was not necessary in the interest of justice. The main reasoning behind the denial was that the expert witness was not under Petitioner’s control and may even have resided in Japan, making the requested discovery burdensome. Id. at 2.

All was not lost for Patent Owner, however, as the Board noted that, if Petitioner did not produce the witness for cross-examination, the testimony relied upon related would be given little or no weight, in light of Patent Owner not having the opportunity to challenge the testimony. Id. at 2.  Accordingly, Patent Owner received a favorable outcome even though the Motion for Additional Discovery was denied.

PTAB Orders Halt to “Speaking” Objections in Deposition

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The Board continues to strongly enforce its regulations regarding the behavior of attorneys defending depositions in inter partes review proceedings. In an order entered in both Medtronic, Inc., Medtronic Vascular, Inc., and Medtronic Corevalve, LLC, v. Troy R. Norred, M.D., IPR2014-00110 and IPR2014-00111, the Board addressed improper speaking objections during a deposition by Patent Owner’s counsel.

Throughout the deposition, Patent Owner’s counsel interposed allegedly improper objections during deposition of its expert witness. Per the Office Patent Trial Practice Guide, and consistent with the Federal Rules of Civil Procedure, “speaking” objections and coaching of witnesses in proceedings before the Board are prohibited.  Cross-examination testimony should be between the lawyer and witness, with no input on questioning and answering during the testimony from other sources. Order at 2.  Further, an objection must be stated in a concise, non-suggestive manner and limited to a single word or term.  For example, proper objections in a deposition would be “Objection, form”; “Objection, hearsay”; and “Objection, relevance.” Id. at 2

Patent Challenger presented an exemplary objection by Patent Owner’s counsel which began “Objection, misleading…” and continued on to a detailed explanation that the question was misleading because it required the witness to make a conclusion based only on a portion of a patent which supposedly was taken out of context. The Board agreed with Patent Challenger that the objection was improper, as it may have helped the witness formulate an answer or otherwise coached the witness. Id. at 3.

Chatty defending attorneys beware, the Board has been clear that speaking objections will not be tolerated. In this case, the Board cautioned that further violations may warrant sanctions, including exclusion of the primary declaration testimony from the witness being deposed. Order at 3.

PTAB Shows a Willingness to Intervene in Deposition Disputes

10929882_sExperienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on the wrong side of the judge. The Office Patent Trial Practice Guide bucks this trend, explaining that “[t]he Board encourages the use of conference calls to raise and resolve issues in an expedited manner.” Id. at 48758. We think lawyers are still reluctant to make that call, but experience is showing that the Board is willing to intervene to settle procedural matters.

For example, in Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00424, Patent Owner asked the Board to limit cross-examination of its expert witness by prohibiting questions directed to whether a feature would have been obvious to one with ordinary skill in the art. Paper 33 at 2. The Board granted the request.

In the Petition, Petitioner relied on a particular prior art reference as disclosing the claimed feature, not as rendering that feature as obvious. Petitioner argued that “obviousness, inherent disclosure, and the understanding of ordinary skill in the art…are inter-mingled as one integral discoverable topic.” Id. at 3. The Board, however, disagreed stating the Petitioner knew the difference between the separate concepts and that they topics were not one and the same. Additionally, the Board found Petitioner has no reason to inquire about the obviousness in light of that feature based on the specific grounds instituted for trial, the arguments in the petition, and absence of testimony in the expert witness’s declaration regarding obviousness of the feature. Id.

In short, deposition combatants take note – the Board is showing both a willingness to intervene in discovery disputes and to limit the testimony of witnesses to only that which is at issue in the IPR proceeding.

Instruction Not to Answer on Relevance Grounds Improper in IPR Depositions

iStock_000001758213XSmallIn Dynamic Drinkware v. National Graphics, IPR 2013-00131, Patent Owner’s counsel prevented Petitioner from questioning a witness by instructing the witness not to answer questions on the ground of relevance. Petitioner contends that such instructions were prohibited, pursuant to the Board’s Testimony Guidelines.  Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772-73. The panel agreed with Petitioner, finding that counsel should have stated its objections for the record and later moved to exclude the testimony.  Alternatively, if “counsel believed that the examination of [the witness] was being conducted in bad faith, or in a manner that unreasonably annoyed, embarrassed, or oppressed [the witness] or Patent Owner, counsel should have promptly initiated a conference call with the Board.”  Order at 3.  The Board decided not to sanction Patent Owner at this time, but did take Patent Owner up on its offer to produce the witness again for a resumption of the deposition. The panel also stated that Patent Owner should agree to bear the expenses of providing a court reporter for the examination.

Second Inter Partes Review Final Written Decision – Second Patent Goes Down

plan CIn a case most notable for a decision restricting a patent owner’s ability to amend claims in inter partes review proceedings, the Board issued its second ever Final Written Decision, rendering all claims at issue in the IPR unpatentable and denying Patent Owner’s Motion to Amend Claims in Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027.  The proceeding involved US Patent No. 7,591,303, directed to vehicle air conditioning systems; namely, operating the system at one capacity when the engine is running, and a second capacity when the engine is not running.

Points of interest in this second Final Written Decision include: 1) The last chapter (before the PTAB, anyway) of the ubiquitous Idle Free decision relating to motions to amend; 2) the Board’s analysis of the one key claim term at issue in the IPR; and 3) consideration of the credibility and admissibility of expert testimony in view of a breach of the IPR deposition rules.

1.  Motion to Amend

The most anticipated portion of this decision, given the significance of this case to motion to amend practice, is the Board’s ruling in denying Patent Owner’s Motion to Amend.  In its renewed Motion to Amend, after having been provided guidance by the Board regarding the requirements of a proper motion to amend, Patent Owner offered three proposed substitute claims.  The Board’s analysis regarding the motion is instructive:

First, the Board considered whether the substitute claims broadened the scope of the original claims.  Order at 28. Because the substitute claims merely added features to the claims for which they substitute, the substitute claims were deemed not to broaden the original patent claims.

Second, the Board considered whether the amendments had written description support.  Order at 28.  Preliminarily, the Board found that “[t]he evidence presented by [Patent Owner] is sufficient, if unrebutted, to show written description support…”  Order at 29.  Petitioner opposed the amendments, arguing, via testimony from its expert, that the disclosure did not support the proposed amendments, but the Board discounted this testimony, finding that it did not adequately explain why the amendments lacked written description support.

Third, the Board considered patentability over the prior art.  Order at 31.  The Board agreed with Patent Owner that one of the new amendments was not disclosed in any of the three references that were used to render the original claims unpatentable.  The Board went on to say, however, that distinguishing the proposed substitute claims only from the prior art references applied to the original patent claims, is insufficient.  Order at 33.  As the Board explained “the proposed substitute claims will be added directly to the patent, without examination, if the patent owner’s motion to amend claims is granted.”  Id.  As such, patent owners bear the burden of demonstrating patentability over the prior art in general.  To that end, Patent Owner was required to set forth what it knows about the level of ordinary skill in the art, and what was previously known, “regarding each feature it relies and focuses on.”  Id.  Merely stating that a reference constitutes the “closest prior art” is insufficient, without discussing the level of ordinary skill in the art and what was previously known.  Order at 34.  Patent Owner failed to provide such information, including, for instance, a representation that, to its knowledge, it was the first to have the subject amendment.  Order at 35. Or, if it was not the first, then what would have been known to one of skill in the art regarding that amendment and why the amended claims are patentable in view of such knowledge.  In short, it was important to the Board to know whether the amendments pre-existed and, if so, how they worked – even if the technology was known in a different field.  For example, in the context of this case, such a showing would include how air conditioning systems worked in non-vehicle systems.  Without such information, the Board was unable to grant the proposed amended claims.

Given the Board’s (perhaps necessary) rolling guidance on motions to amend, how many current motions meet all the requirements imposed by the Board that were not detailed in the IPR regulations?  We’ll see…

2.  Claim Construction Analysis and Anticipation Finding

Turning to the substance of the Petition, the Board denied Patent Owner’s argument that “engine off” in the claims requires that all electronic circuits that automatically start the engine must also be off.  The Board held that the claims do not require “vehicle electronics off”; but, rather, merely that the engine is off.  The Board cited to specification excerpts to support its findings.  Order at 7. As such, the Board construed “engine off” as “engine not running.”

Regarding the substantive grounds of unpatentability proposed by Petitioner, the Board found persuasive Petitioner’s prior art and expert evidence, such that Petitioner was deemed to have met its burden of proving, by a preponderance of the evidence, the unpatentability of the subject claims.

More specifically, the prior art of record disclosed an “engine off” state, whereby the air conditioning system worked at a reduced capacity as compared to an “engine on” state.  Because the electronics were not on, however, Bergstrom argued that the art did not meet the limitations of the ‘303 patent claims.  The Board, however, denied that claim construction and found, therefore, that the art of record anticipated the subject claims.  Relatedly, the Board found that the subject claims were rendered obvious by a separate combination of prior art references.  In short, the substance of the argument regarding patentability was fairly straightforward, especially in light of the Board’s claim construction.

3.  Breach of IPR Deposition Rules

As a last interesting component of the Board’s decision, the Board admonished Petitioner in the opinion because counsel for Petitioner had a discussion with Petitioner’s expert during a deposition break, in violation of Office Patent Trial Practice Guide, 77 Fed Reg 48,756, 48,772 (Aug 14, 2012).  Despite this fact, the Board declined to discredit the testimony of Petitioner’s expert, primarily because the witness testified that he and counsel only spoke in generalities, regarding how to answer questions in the deposition.  Despite the fact that the expert did change one of his answers in the deposition, the Board noted that Patent Owner did not articulate how the one changed answer affects any issue of contention.  Order at 25. Instead, the Board stated that it took the conversation into consideration in generally assessing the experts credibility.  For the same reasons, the Board denied Patent Owner’s Motion to Exclude the expert’s testimony, based on the same grounds.  Order at 38.

In the end, the Board’s decision marked a second victory for Petitioners in inter partes review proceedings.  The claims at issue were determined to be unpatentable over the prior art and, because Patent Owner did not show how the substitute claims were patentable over the prior art, its Motion to Amend was denied.

Deposition Parameters Start to Take Shape in Inter Partes Review Proceedings

iStock_000018580651XSmallAs more IPR proceedings wind their way through the discovery phase, issues relating to depositions are starting to pop up in PTAB decisions.  Here, we take a look at some recent Board decisions that help clarify those issues in inter partes review trials.

Disputes During a Deposition and Instructions Not to Answer

Corning Inc. v. DSM IP Assets B.V., 2013-00043 (Paper 31).  Counsel for the parties called the Board during a deposition. At issue was an instruction by Petitioner’s counsel that the witness not answer questions deemed outside the scope of the deposition.  The Board held that such instructions were only proper when made to preserve a privilege, to enforce a limitation ordered by the Board, or to present a motion to terminate or limit the testimony.  Office Patent Trial Practice Guide Appendix D: “Testimony Guidelines,” 77 Fed. Reg. 48756, 48772.

Videotaping Deposition Testimony

Atrium Medical Corp. v. Davol Inc., 2013-00184 (Paper 24).  In the initial conference call, Patent Owner requested authorization to take video taped testimony of Petitioner’s expert.  The Board explained that the parties may agree among themselves to take video testimony, but authorization is required to actually submit it in the proceeding.  37 C.F.R. § 42.53(a).  In the event that authorization is sought, the requesting party must explain to the Board the reason why the testimony should be reviewed because the Board will only view testimony if a party has demonstrated a specific reason or need for the Board to do so.

Request to Submit Videotaped Testimony

Corning Inc. v. DSM IP Assets B.V., 2013-00043 (Paper 41).  Patent Owner requested that a total of 60 minutes of deposition testimony be submitted to the Board for two depositions that covered a total of 9 days.  Given the limited amount of testimony being submitted, the Board found the request to be reasonable.  The Board also noted that such video testimony must be submitted in MPEG format in excerpts that do not exceed 25 MB.

Foreign Deposition

Ariosa Diagnostics v. Isis Innovation Ltd., 2012-00022 (Paper 67).  The Board issued an order after a conference call in which the Board and parties discussed the ground rules for a foreign deposition.  The Board’s guidance included: 1) ensuring the witness can be properly sworn in before the deposition (i.e., through an appropriate consular official); 2) voir dire of the interpreter, to ensure they have proper qualifications, should be the exception not the rule – parties should resolve such issues prior to the deposition; 3) the interpreter can converse with the witness about any testimony, to ensure an accurate translation, but the parties will be able to voir dire the interpreter regarding any such conversation;  and 4) the same interpreter may be used in the deposition and to prepare the witness because opposing counsel can have a “check” interpreter to raise any issues as to the interpretation of any answer.

Scope of Cross-Examination

Micron Tech., Inc. v. Board of Trustees of the Univ. of Ill., IPR2013-00005.  Patent Owner requested guidance from the Board regarding whether it could ask Petitioner’s expert questions regarding grounds of unpatentability that were not included as the basis for instituting the IPR trial.  The Board instructed that cross-examination is limited to the scope of direct examination.  Despite that fact, inquiry into topics from the expert’s testimony that deal with grounds upon which the trial was not instituted may be appropriate.  To the extent there is disagreement, the Petitioner can object to the questions and such testimony will be subject to a motion to exclude at a later date.

Format of Video Evidence

McClinton Energy Grp., LLC v. Magnum Oil Tools Int’l, Ltd., IPR2013-00231 (Paper 7).  Petitioner mailed to the PTAB a DVD that contained a video file that was listed as an exhibit to the Petition.  DVD videos are not, however, proper.  Only MPEG videos should be submitted and should be uploaded in PRPS.

Errata Sheets

Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC IPR2012-00001 (Paper 50).  Patent Owner filed errata sheets regarding the deposition of the patent’s inventor and expert and the Board provided guidance on such practice.  In general, the rules do not provide for the filing of errata sheets.  Before filing such a sheet, therefore, the party seeking to have it entered must contact the Board and seek authorization before doing so. 77 Fed. Reg. 48612, 48642.  The Board found that the errata sheets undisputedly altered the testimony of witnesses, and thus disallowed entry of the errata sheets.  The Board went on to “take this opportunity to state that unless unopposed by the other party, a request to make a material change to the substance of cross-examination testimony is unlikely to be successful.”