While stating that live testimony will generally not be necessary, the Patent Trial and Appeal Board (PTAB) identifies “very limited circumstances” where live testimony before the board may be permitted.
The Office Patent Trial Practice Guide states “[o]ccasionally, the Board will require live testimony where the Board considers the demeanor of a witness critical to assessing credibility.”
The PTAB elevated two decisions on March 18 to precedential status, K-40 Electronics, LLC v. Escort, Inc. and DePuy Synthes Products, Inc. v. Medidea, LLC. Taken together, these decisions clarify when live testimony may be permitted or required.
In K-40, petitioners K-40 Electronics, LLC filed IPR petitions challenging two patents invented by a Steven K. Orr that claimed priority to June 14, 1999. Petitioner K-40 argued anticipation and obviousness under two references, neither of which was published prior to the patents’ June 14, 1999, priority date, but both of which were filed earlier in 1999, making each §102(e) art. No backup §102(b) argument was provided.
Patent owner Escort, Inc. responded by attempting to antedate the prior art. To do so, Escort submitted declarations by Mr. Orr in each of the IPRs. Escort then requested that Mr. Orr give live testimony to the board regarding his purported antedating work. Petitioner K-40 opposed, arguing that permitting this would “establish a ‘de facto’ rule permitting live testimony in all antedating disputes.” The board disagreed that this would permit live testimony generally, and set forth the following two factors:
Applying those factors, the board determined that because the antedation would avoid all of the asserted prior art, Mr. Orr’s testimony “may well be case-dispositive.” Petitioner argued that because Mr. Orr’s testimony is uncorroborated, it would still not be case-dispositive, but the board held corroboration could be addressed during the live testimony. Similarly, the board noted that while “the credibility of experts often turns less on demeanor and more on the plausibility of their theories,” courts make credibility determinations to assess the candor of fact witnesses, which also weighed in favor of allowing the live testimony.
As both factors supported live testimony, the board granted patent owner Escort’s motion. The board further limited the live testimony to just cross-examination and redirect to prevent changes to the testimony presented in Mr. Orr’s declaration.
In DePuy, petitioner DePuy petitioned for cancellation of US Patent No. 6,558,426 to Dr. Michael Masini. In contrast to Escort, patent owner Medidea did not submit a declaration of Dr. Masini in response.
On January 17, 2019, after filing its Sur-Reply, patent owner Medidea requested permission to allow Dr. Masini to “participat[e] at the oral hearing.” In a one-page order, the board determined that this issue had been resolved by the Trial Practice Guide, which states that “[n]o new evidence or arguments may be presented at the oral argument.” As “Dr. Masini did not provide any declaration… in this proceeding… any testimony that Dr. Masini provides at the oral hearing would be new evidence and forbidden under [the Guide].”
In making these two decisions precedential, the PTAB has confirmed that live testimony at the oral argument will be an uncommon occurrence. In addition to limiting live testimony to testimony that may be “case-dispositive,” and indicating that live expert testimony will generally not be permitted, the board also made clear that even if the testimony were case dispositive, it cannot be “new.”
Accordingly, parties wishing to introduce live testimony should first consider whether the board would consider the testimony to be (i) case-dispositive; (ii) from a fact witness and not an expert; and (iii) evidence previously submitted in a declaration.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the author Dion M. Bregman in our Silicon Valley office, or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Joshua M. Dalton
Andrew V. Devkar
Jason C. White
Louis W. Beardell, Jr.
Brent A. Hawkins
 Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012).
 No. IPR2013-00203, Paper No. 34 (PTAB May 21, 2014) (precedential Mar. 18, 2019)
 No. IPR2018-00315, Paper No. 29 (PTAB Jan. 23, 2019) (precedential Mar. 18, 2019)
 No. IPR2013-00203, Paper No. 1, at 5.
 No. IPR2013-00203, Paper No. 34, at 2.
 Id. At 3.
 Id. at 2.
 Id. at 4.
 See id. at 3.
 No. IPR2018-00315, Paper No. 1
 No. IPR2018-00315, Paper No. 29, at n.1.
 Id. at 2 quoting Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).