APJs Confirm a Deposition Protocol

Scott Daniels | July 25, 2014

The issue of when an attorney defending a deposition in an IPR proceeding may privately speak with his or her witness arose this week in Focal Therapeutics v. Senorex (IPR2014-00116).

According to counsel for the Patent Owner, when he had concluded his cross-examination of the Petitioner’s expert witness, “Petitioner’s counsel initiated a private conference with his witness to discuss his redirect testimony.”  Evidently, counsel for the Patent Owner complained and the parties sought clarification from the APJs.  The question posed was whether during the specific period – after cross-examination concluded, but before redirect questioning has begun – may the defending attorney privately confer with the witness.

Reading the PTO’s Testimony Guidelines in a literal manner, the APJs concluded that the attorney and the witness may privately speak.  Those Guidelines state that

[o]nce the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not: (a) consult or confer with the witness regarding the substance of the witness’ testimony already given, or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a Board order; or (b) suggest to the witness the manner in which any questions should be answered.

(77 Fed. Reg. at 48772; emphasis added).

The APJs first identified the key passage of the Guidelines: “[o]nce the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded,” counsel may not, for example, “suggest to the witness the manner in which any questions should be answered.” Id. at 48772 (emphasis added by APJs). The APJs explained that “cross-examination” is either “cross-examination or re-cross, but does not refer to the entire time frame between when cross-examination commences, and until re-cross examination concludes. The prohibition of conferring with the witness ends once cross-examination concludes, and, if relevant, begins again when re-cross commences, and continues until re-cross concludes. The prohibition does not exist, however, during the time frame between conclusion of cross-examination and start of re-cross” (emphasis added).

This ruling is consistent with that of another APJ panel in Google Inc. and Apple Inc. v. Jongerius Panoramic Tech., LLC, (IPR2013-00191).

As a helpful aside, the APJs commented that, in the future, the parties were free to “agree among themselves regarding such matters.”

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