Addressing the scope of Patent Trial and Appeal Board (PTAB) guidelines that prohibit lawyers from conferring with their witness during cross-examination, the PTAB designated as precedential a 2014 decision permitting lawyers to confer with their witness after cross-examination ends and before any recross begins. Focal Therapeutics Inc. v. SenoRx, Inc., Case No. IPR2014-1593 (PTAB July 21, 2014) (Bonilla, APJ) (designated precedential July 10, 2019). According to the decision, a lawyer is permitted to confer with her witness to prepare a redirect.
The PTAB’s Patent Trial Practice Guide sets forth certain Testimony Guidelines. Among other rules, the Guidelines prohibit lawyers from conferring with their witnesses during cross-examination. The Guidelines state in the relevant part:
Once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not: (a) consult or confer with the witness regarding the substance of the witness’ testimony already given, or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a Board order; or (b) suggest to the witness the manner in which any questions should be answered.
The question presented to the PTAB was simple: when does cross-examination conclude? Does it span the entire time of the deposition to include cross-examination, redirect and recross, or does it conclude with the end of the initial of cross-examination?
The PTAB determined that “cross-examination” includes cross-examination and recross, but it does not include the entire deposition. The prohibition on conferring with a witness does not exist between the conclusion of cross-examination and the start of recross. As a result, lawyers are permitted to confer with the witness to prepare a redirect examination.
Practice Note: The Guidelines permit the parties to come to their own agreement regarding the conduct of depositions, including whether to permit conferring with witnesses before redirect.
