When a party submits declaration testimony and the opposing party is not entitled to another brief, “observations on cross-examination” are the opposing party’s mechanism for introducing declaration testimony from that witness. Early on, the PTAB determined a party generally is not allowed to submit such observations for its own witnesses. A PTAB panel has now eased this restriction, in Zhongshan Broad Ocean Motor Co. et al. v. NIDEC Motor Corp., IPR2014-01121,-01122 (Sept. 10, 2015) (Paper 34).
There, the Petitioner’s reply briefs cited declaration testimony from Patent Owner’s witness. Patent Owner was not entitled to another brief, so sought to submit observations on cross examination to provide “context” for the deposition testimony. A similar request had been made in Schott Gemtron Corp. v. SSW Holding Co. Inc., IRP2013-00358 (May 16, 2014) (Paper77). In Schott, the panel allowed only very limited observations—e.g., where Petitioner cited the transcript where a witness made a particular statement, but the witness later corrected his testimony and said the opposite.
The Zhongshan panel’s decision was much more favorable to the Patent Owner. The PTAB first noted the Federal Rules of Evidence apply to inter partes reviews. 37 C.F.R. § 42.62(a). FRE 106 directs “[w]hen a writing or recorded statement or part thereof is introduced by a party, an adverse party may require the introduction at that time of any other part or any other writing or recorded statement which ought in fairness to be considered contemporaneously with it.” The Schott decision did not discuss or cite FRE 106. Here, though the Board found FRE 106 requires the context of a witness’s statements ought in fairness to be considered “contemporaneously” when evaluating the witness’s testimony (i.e., when the Board prepares for the oral argument). Based on FRE 106, the Board allowed Patent Owner to file, as an exhibit, a chart identifying portions of the transcript that provide the needed context. The chart could only include page and line numbers—no additional statements or explanations were authorized.
In developing the procedures for inter partes reviews, the Patent Office pulled out a rarely-used legal concept called a Motion for Observation Upon Cross-Examination. Used in IPR proceedings to allow a party to direct the PTAB’s attention to cross-examination testimony when there is no other briefing available to the party, it is worth noting some of the contours of this procedure, as it is developed through the Board’s decisions. In Scott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358, the Board denied Patent Owner’s attempt to file such a Motion for Observation on the cross-examination testimony of its own witnesses. Paper 77 at 2.
Patent Owner argued that a Motion for Observation of its own witnesses was appropriate because Petitioner mischaracterized the testimony of these witnesses. Id. at 2. For example, it was argued that Petitioner summarized the witnesses’ testimony incorrectly and cited certain portions of the deposition transcript but failed to cite other portions that allegedly contradict the cited portions. Id. at 2. Patent Owner argued that it was prejudiced because no other substantive paper could be filed to address the alleged mischaracterizations or otherwise bring them to the Board’s attention. Id. at 2.
The Board denied authorization to file a motion for observation on cross-examination because the rule allowing such observations is directed to the party taking the cross-examination. Id. at 3. The Board found it inappropriate to allow a party to file observations on the cross-examination testimony of its own witnesses. Id. All was not lost for the Patent Owner, however, as the Board offered two lifelines. First, the Board stated it would review the testimony cited by Petitioner in context to determine whether Petitioner’s arguments about that testimony are correct, and thus there is no need for a motion for observation on cross-examination. Id. at 3. Second, the Board instructed that, while oral hearing is not an opportunity for a party to expand upon testimony in a manner not already presented, Patent Owner is allowed to cite other portions of the witnesses’ testimony at oral hearing to demonstrate that Petitioner’s characterization of the witnesses’ testimony is incorrect. Id. at 4.