Denying Authorization to File a Motion to Disqualify, Motion to Present Live Demo, and Motion to Expunge Exhibit CBM2014-00131; CBM2014-00133; CBM2014-00135; CBM2014-00136; CBM2014-00137

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Takeaway: A live demo may not be authorized to accompany a preliminary response because it is akin to new testimony.

In its Order, the Board addressed three separate issues. First, the Board declined to authorize Petitioner to file a motion to disqualify Patent Owner’s counsel or a motion for additional discovery related to the motion to disqualify. Second, the Board declined to authorize Patent Owner to present a live demo in support of its Preliminary Response. Third, the Board declined to authorize Petitioner to file a motion to expunge Exhibit 1006. Continue reading

Granting in Part Rehearing on Decision to Permit Live Testimony at Hearing IPR2013-00203

Takeaway: The Board may at its discretion allow live testimony by an inventor at oral hearing with various restrictions that it may deem appropriate.

In its Order, the Board granted in part Petitioner’s Request for Rehearing of the Board’s earlier decision to permit live testimony by named inventor Steve Orr at the final hearing in this inter partes review proceeding. This marks the first time that the Board has ever permitted live inventor testimony at an oral hearing. Continue reading

Granting Motion for Live Testimony at Hearing IPR2013-00203

Takeaway: The Board may grant a request for live testimony by the sole inventor as a fact witness on the issue of antedating the only references relied on by a petitioner because the testimony would likely be dispositive.

In its Order, the Board granted Patent Owner’s request for live testimony from its named inventor at the final oral argument. Only under very limited circumstances will cross-examination of witnesses be ordered to take place in the presence of an administrative patent judge. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012). For example, the Board may occasionally require live testimony where the Board considers the demeanor of a witness critical to assessing credibility. Id. Factors to consider when determining the importance of the witness’s live testimony include (1) whether the testimony may be case-dispositive, and (2) whether the witness is a fact witness, because the credibility of such a witness depends on demeanor. Continue reading