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.

As background, Patent Owner had filed a motion seeking to present live testimony by Mr. Orr, which the Board had granted subject to various restrictions. That is, the requested testimony was to be limited to 30 minutes of cross-examination by Petitioner’s counsel followed by 30 minutes of redirect by counsel for Patent Owner, and Patent Owner would have to rely on Mr. Orr’s declaration as his direct examination, i.e., there would be no live direct testimony from Mr. Orr. Petitioner then filed its Request for Rehearing which asserted that the Board overlooked or misapprehended several matters in deciding to allow live testimony (with the aforementioned restrictions) by Mr. Orr.

A first ground of objection asserted by Petitioner, namely, that it has ‘“[n]o [f]urther [q]uestions’ for Mr. Orr,” was criticized by the Board because it was considered to be a new argument in the Request for Rehearing that had not been presented earlier in Petitioner’s Opposition. The Board went on to allow Patent Owner the first opportunity to examine Mr. Orr, and then, if Petitioner so desires, Petitioner would have the opportunity to cross-examine Mr. Orr at the hearing and/or rely on his deposition testimony.

A second ground of objection raised by Petitioner was that the Board, in its decision to allow live testimony by Mr. Orr, “overlooked the availability of a video recording of Mr. Orr’s deposition that would provide a record of his demeanor.” Although the Board disagreed with this assertion, for various reasons it ended up permitting Petitioner to submit and rely on excerpts from the video record of the deposition. Specifically, the Board allowed Petitioner to submit up to 30 minutes of the video recording of Mr. Orr’s deposition testimony at a point in time no later than five business days following the oral hearing.

K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203
Paper 36: Order on Request for Rehearing
Dated: May 30, 2014
Patent 7,999,721
Before: Glenn J. Perry, Thomas L. Giannetti, and Trenton A. Ward
Written by: Giannetti