Instruction Not to Answer on Relevance Grounds Improper in IPR Depositions

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iStock_000001758213XSmallIn Dynamic Drinkware v. National Graphics, IPR 2013-00131, Patent Owner’s counsel prevented Petitioner from questioning a witness by instructing the witness not to answer questions on the ground of relevance. Petitioner contends that such instructions were prohibited, pursuant to the Board’s Testimony Guidelines.  Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772-73. The panel agreed with Petitioner, finding that counsel should have stated its objections for the record and later moved to exclude the testimony.  Alternatively, if “counsel believed that the examination of [the witness] was being conducted in bad faith, or in a manner that unreasonably annoyed, embarrassed, or oppressed [the witness] or Patent Owner, counsel should have promptly initiated a conference call with the Board.”  Order at 3.  The Board decided not to sanction Patent Owner at this time, but did take Patent Owner up on its offer to produce the witness again for a resumption of the deposition. The panel also stated that Patent Owner should agree to bear the expenses of providing a court reporter for the examination.

 

Topics:  Inter Partes Review Proceedings, Patent Infringement, Patent Litigation, Patent Trial and Appeal Board, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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