DePuy Synthes Prods., Inc. v. MedIdea, L.L.C., Case IPR2018-00315, Paper 29
Patent Owner MedIdea requested live testimony from the inventor of the challenged patent. The Board denied Patent Owner’s request in a notably short opinion. Citing the Trial Practice Guide, the Board noted that the inventor “did not provide any declaration evidence in this proceeding” and any testimony he provided at the hearing “would be new evidence and forbidden.”
The Board’s decision in DePuy is quite clear that live testimony of a non-declarant inventor is unlikely to be granted, as it will necessarily be new evidence. The Board’s reasoning in DePuy extends to other live testimony that is likely to amount to new evidence raised for the first time. This is in contrast with testimony that may be helpful to assess the demeanor of a witness in assessing credibility, such as in the case of a fact witness. In K–40 Electronics, LLC v. Escort, Inc., made precedential on the same day as DePuy, the Board granted an opposed request for live testimony and provided several factors to determine whether live testimony might be appropriate.
- Live testimony is rare and will be permitted only in isolated circumstances.
- Live testimony is unlikely to be granted where the testimony will amount to new evidence not previously of record, such as where a declaration from the witness was not previously submitted.
- If live testimony is likely to be beneficial, prepare in advance by submitting a declaration from the witness.