K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203, Paper 34
The Patent Owner filed an opposed motion, seeking to present live testimony of its named inventor during final oral arguments before the Board.
The Board stated it rarely deems live testimony necessary at oral arguments, but that under “very limited” circumstances, cross-examination of a witness may be ordered—for example, when the demeanor of a witness is critical for assessing credibility. (Paper 34, at 2.)
The Board granted the request for live testimony of the named inventor, here, because: (1) the inventor was a fact witness, and (2) the Patent Owner relied on the inventor’s declaration in this and a related proceeding to antedate the only references used to challenge patentability. (Id. at 2.) Under these circumstances, the Board concluded the live testimony was key and may be case-dispositive. (Id.)
In issuing its decision, the Board rejected the Petitioner’s suggestion that granting the Patent Owner’s request created a “de facto” rule permitting live testimony in all antedating disputes, stating instead that such requests would be considered on a case-by-case basis. (Id. at 3.)
The Board identified the following factors favoring live testimony: (1) that the testimony could be case-dispositive, and (2) that the inventor was a fact witness, as opposed to an expert witness whose credibility “often turns less on demeanor and more on the plausibility of their theories.” (Id.) Although the Petitioner disputed the alleged “case-dispositive” nature of the inventor’s credibility, the Board—instead of preemptively deciding that issue in favor of the Petitioner—expressed its preference to address that issue after hearing live testimony and argument of the parties. (Id. at 4.)
To address the Petitioner’s concern that the Patent Owner would use live testimony as a chance to “rewrite” unfavorable testimony, the Board limited the scope of examination to only 30 minutes of cross-examination and 30 minutes of redirect. It explicitly disallowed any changes to the inventor’s previously submitted declaration. The Board noted if the inventor changed his testimony, the Petitioner could use his prior declaration for impeachment purposes. (Id. at 3-4.) The Board ordered the live testimony to precede the oral argument.
The Board issued this order under 37 C.F.R. § 42.70, which addresses oral argument before the Board.
1. The Board may, on a case-by-case basis, allow requests for live testimony. Factors weighing in favor of live testimony include whether the testimony is case-dispositive and if the witness is a fact witness.
2. The Board is not likely to grant such requests for an expert witness, whose credibility it views is based on the plausibility of an expert’s theories, as opposed to an expert’s demeanor.
3. If the Board permits live testimony, the Patent Owner will not get a chance to present live, direct testimony or otherwise change any of its previously submitted testimony. Rather, the Board will likely limit the scope of examination to a short cross-examination (e.g., 30 minutes) followed by a short redirect (e.g., 30 minutes).