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.

In this case, the Board stated that the testimony of the sole inventor on the issue of antedating the only two references relied on by Petitioner in its challenge to patentability may well be case-dispositive. The inventor is a fact witness in this case. Further, the Board was not persuaded by Petitioner’s argument that live testimony would give Patent Owner a chance to “rewrite” testimony, because only cross-examination and redirect will be permitted. No changes to the direct testimony will be possible, and Petitioner may impeach the witness with his prior testimony.

The Board ordered live testimony limited to 30 minutes of cross-examination followed by up to 30 minutes of redirect at the beginning of the oral argument. The Board also ordered that cross-examination will be strictly limited to the witness’s declaration testimony and the scope of redirect will be strictly limited to the scope of cross-examination.

K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203
Paper 34: Order on Request for Live Testimony
Dated: May 21, 2014
Patent 7,999,721
Before: Glenn J. Perry, Thomas L. Giannetti, and Trenton A. Ward
Written by: Giannetti