What have we learned about Inter Partes Reviews (IPR) since its inception on September 16, 2012?

Since the September 16, 2012, effective date of the AIA trial provisions, 3,277 IPR petitions have been filed through July 31, 2015, and the trend continues to be on the rise.  In the first seven months of this year alone, 1,436 petitions were filed, which is over 100 more than were filed in all of 2014, http://www.uspto.gov/sites/default/files/documents/2015-07-31%20PTAB.PDF

Filing an IPR petition enables both petitioners and inventor respondents to get a decision on validity of patents in 18 months or less and, arguably, spending less money while doing so.  It also provides the benefit of using litigation-like procedures before the Patent Office, including oral motions and expert and fact depositions.

By way of background, IPR proceedings are limited to review of the patentability of one or more claims in a patent on the grounds only of novelty and nonobviousness, based on only patents or printed publications. The IPR process usually begins with a conference call between the Administrative Patent Judges (APJs), and the parties.  Experience has shown these initial calls, as well as important oral motions, are reported and transcribed by a well-trained and skilled stenographic court reporter.  Generally, these court reporters are not only familiar with the terminology and format, but also the procedural rules set forth by the Patent and Trial Appeal Board (PTAB).

By their very nature, these conference calls and/or oral motions often take place on short notice.  Court reporting firms with experience handling IPR conference calls and depositions are well-equipped and prepared to handle both last-minute and planned proceedings with certified stenographers experienced in IP and IPR matters.

Beyond initial telephone conferences and motions, limited discovery proceeds in an orderly and sequential fashion upon issuance of the Scheduling Order.  As required by Section 42.53 of the Code of Federal Regulations, “uncompelled direct testimony must be submitted in the form of an affidavit. All other testimony … must be in the form of a deposition transcript.”  Other requirements from the Board for compelled deposition testimony include limiting the time for each deposition to seven hours for direct examination, four hours for cross examination, and two hours for redirect examination.

For direct deposition testimony, the Board requires the Notice of Deposition contain the following:

1.  The time and place of the deposition;
2.  The name and address of the witness;
3.  A list of the exhibits to be relied upon during the deposition; and
4.  A general description of the scope and nature of the testimony to be elicited.

§42.53 Taking testimony.

Four sections of §42.53, (3), (5), (7) and 8(g), are worthy of mention and relate to court reporting services:

• (3) Any exhibits used during the deposition must be numbered as required by 42.63(c), (see below), and must, if not previously served, be served at the deposition. Exhibits objected to shall be accepted pending a decision on the objection.

• (5) When the testimony has been transcribed, the witness shall read and sign (in the form of an affidavit) a transcript of the deposition unless:

(i) The parties otherwise agree in writing;

(ii) The parties waive reading and signature by the witness on the record at the deposition; or

(iii) The witness refuses to read and sign the transcript of the deposition.

• (7) Except where the parties agree otherwise, the proponent of the testimony must arrange for providing a copy of the transcript to all other parties. The testimony must be filed as an exhibit.

• (8) (g) Except as the Board may order or the parties may agree in writing, the proponent of the direct testimony shall bear all costs associated with the testimony, including the reasonable costs associated with making the witness available for the cross-examination.

 Section 3 and §42.63 Form of evidence.

Section 42.63 provides guidelines regarding the form of evidence:

(a) Exhibits required. Evidence consists of affidavits, transcripts of depositions, documents, and things. All evidence must be filed in the form of an exhibit.

(c) Exhibit numbering. Each party’s exhibits must be uniquely numbered sequentially in a range the Board specifies. For the petitioner, the range is 1001-1999, and for the patent owner, the range is 2001-2999.

(d) Exhibit format. An exhibit must conform to the requirements for papers in §42.6 and the requirements of this paragraph.

(1) Each exhibit must have an exhibit label.

(i) An exhibit filed with the petition must include the petitioner’s name followed by a unique exhibit number.

(ii) For exhibits not filed with the petition, the exhibit label must include the party’s name, followed by a unique exhibit number, the names of the parties, and the trial number.

(2) When the exhibit is a paper:

(i) Each page must be uniquely numbered in sequence; and

(ii) The exhibit label must be affixed to the lower right corner of the first page of the exhibit without obscuring information on the first page or, if obscuring is unavoidable, affixed to a duplicate first page.

(e) Exhibit list. Each party must maintain an exhibit list with the exhibit number and a brief description of each exhibit. If the exhibit is not filed, the exhibit list should note that fact. A current exhibit list must be served whenever evidence is served, and the current exhibit list must be filed when filing exhibits.

Section 5, Reading and Signature:

A court reporter should not ask or inquire about reading and signing. It is presumed to be not waived unless:

• the parties otherwise agree in writing;
• the parties waive reading and signature by the witness on the record at the deposition.
• The witness refuses to read and sign the transcript.

Furthermore, the court reporter is required to use a certificate as specified by §42.53(6). 

§42.53 (7) and (8) (g) Responsible party and Costs.

One significant peculiarity of IPRs relates to the party responsible for the fees associated with the taking of deposition testimony.  According to Rule 42.53 (7) and (8) (g), “Except where parties agree otherwise, the proponent of the testimony must arrange for providing a copy of the transcript to all other parties.”  In addition, “The proponent of the direct testimony shall bear all costs associated with the testimony, including the reasonable costs associated with making the witness available for the cross- examination.”

The net effect of this rule is to require the proponent of the testimony to deliver a copy of the transcript to other parties and to bear all “reasonable” associated costs.  The next question, of course, is what constitutes “reasonable” costs.  It has been our experience that the proponent of the testimony deems as reasonable only that the deposition transcript be delivered on regular terms, and that any “premium” services resulting in additional costs, such as immediate rough drafts, realtime — whether local or remote– video, video streaming, or expedited delivery, are the responsibility of the party requesting same.

To avoid any confusion or conflicts about what constitutes “reasonable” costs and who is to receive and be billed for the original and copies of the transcript, be certain to provide clear guidance and instructions to the court reporting agency in advance of the proceeding, conference call or deposition, as to the responsible billing party or billing agreements made between the parties to which the court reporting agency may not be privy.