Scott Daniels | May 28, 2014
This past Thursday, the APJs signaled their willingness to hear live testimony at the oral hearing, at least in certain circumstances. The panel in K-40 Electronics v. Escort (IPR2013-00203) explained that they do “not envision that live testimony will be necessary at many oral arguments … [but] under very limited circumstances, cross-examination of witnesses may be ordered to take place in the presence of an administrative patent judge.”
The APJs then identified two factors to be considered: (1) “the importance of the witness’s testimony to the case, i.e., whether it may be case-dispositive,” and (2) whether the witness offered is a fact witness or an expert, “the credibility of experts often turns less on demeanor and more on the plausibility of their theories.” Presumably, subsequent cases will present other factors that would affect the APJs’ analysis.
Here, the Patent Owner offered the only named inventor as a fact witness. Since the Patent Owner had submitted a declaration by the inventor that purported to antedate the only references relied upon by the Petitioner, the APJs found that his testimony would be “key, and may well be case-dispositive” and they will hear his testimony at the oral hearing.
This was not a complete victory for the Patent Owner, however, since the APJs also “determined that only cross-examination and redirect will be permitted, thus limiting the scope of examination. No changes will be possible to [the inventor’s] direct testimony, for that is fixed by his previously submitted declaration. And should Petitioner suspect that [the inventor] is changing his testimony, he may be impeached with his prior testimony.”
The APJs’ limited ruling might or might not be exactly what the Patent Owner had in mind when it offered the inventor for live testimony. Parties need to think carefully on this issue.