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Taking a Deposition in an IPR or PGR

By Eugene T. Perez and Brian Cannon

REQUIREMENTS FOR DEPOSITIONS IN POST GRANT PROCEEDINGS, SUCH AS IPR

A deposition is the testimony of a party or witness in a civil or criminal proceeding taken before trial.  For a USPTO post-grant proceeding, including inter partes review (“IPR”), post-grant review (“PGR”), and PGR of a covered business method (“CBM”) patent, testimony can be taken of an affiant or declarant. For instance, when a third party files a petition requesting PGR with a supporting declaration and a PGR trial is instituted, the patent owner may want to depose that declarant before filing a motion to amend the patent.

In post grant proceedings, sections 42.52-53 of the Patent Trial & Appeal Board (“Board”) Rules give the requirements for such deposition testimony.[1]  Compelled testimony “must be in the form of a deposition transcript.”[2]  If the testimony is uncompelled, it must be in the form of an affidavit.[3]

Board Authorization of the Deposition is Required

A party seeking deposition testimony “must file a motion for authorization.”[4]  Such a motion must describe “the general relevance of the testimony, document, or thing” and the “name or title” of the witness.[5] The Board may permit video-recorded testimony if authorization is given in advance and the parties agree.[6]   Additionally, the Board “may authorize or require live or video-recorded testimony.”[7]

Authorization of depositions taken outside of the United States additionally requires: 1) identification of the country where the deposition is to be located; 2) an explanation of why “the witness can be compelled to testify in the foreign country;” 3) “a description of the procedures that will be used to compel the testimony”; and 4) the estimated duration of the deposition.[8]

Cross-Examination is Permitted

Whether an IPR, PGR, or PGR for a CBM, cross-examination of deposition witnesses is permitted.[9]  The scope of cross-examination “is limited to the scope of the direct testimony.”[10]  Cross-examination should “ordinarily” be performed “after any supplemental evidence relating to the direct testimony has been filed and more than a week before the filing date for any paper in which the cross-examination testimony is expected to be used.”[11]  Where more than one witness is to be cross-examined, the cross-examining party may choose the order of cross-examination.[12]

Deposition Costs Typically Borne by the Moving Party

By default, the moving party bears any costs relating to the deposition, including “the reasonable costs associated with making the witness available for the cross-examination.”[13]  This default can be changed by stipulation of the parties or order of the Board.[14]

Location

“[D]uring the testimony period, deposition testimony may be taken at any reasonable time and location within the [US] before any disinterested official authorized to administer oaths at that location.”[15]  The Board, though, may order otherwise.[16]

Duration

By default, the time limits for depositions in post grant proceedings are “[s]even hours for direct examination, four hours for cross-examination, and two hours for redirect examination.”[17]    The parties or the Board, however, may stipulate otherwise.[18]

Filing of a Notice of Deposition is Required

Prior to filing.  Before filing the notice of deposition, a scheduling conference and service of requisite papers are required.[19]    At the scheduling conference, “all parties to the proceeding must agree on the time and place for [depositions].”[20]  Board involvement is only necessary where the parties cannot mutually agree on time and location.[21]

The initiating party must serve the following on the party to be deposed: 1) “A list and copy of each document under the party’s control and on which the party intends to rely;” and 2) “A list of, and proffer of reasonable access to, anything other than a document under the party’s control and on which the party intends to rely.”[22]  Service must be effected at least three days prior to the scheduling conference or, where there is no such conference, at least ten days prior to the deposition.[23]

If the deposition is to be taken in a language other than English, the Board must be so notified “at least five business days before the deposition.”[24]

Timing of filing.  “The party seeking the deposition must file a notice of the deposition at least ten business days before a deposition.”[25]

Contents of filing.  The notice of deposition must list 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;” 4) “A general description of the scope and nature of the testimony to be elicited;” and 5) “[T]he time and place of the deposition.”[26]

Special counter-notice is required for a party seeking “direct testimony of a third party witness” at the time of the deposition.[27]

Objecting to a Defective Notice of Deposition—Be Prompt!

A motion to quash is permitted in response to a defective notice of deposition.[28]    Such a motion requires prior authorization, which must be sought “promptly.”[29]

Taking a Deposition

Swearing in of witnesses.  Prior to deposition, each witness must be sworn in under oath before an officer “authorized to take testimony under 35 U.S.C. § 23.”[30]

Exhibits.  Any exhibits “must be numbered as required by § 42.63(c).”[31]  Such exhibits, “if not previously served,” must “be served at the deposition.”[32]   “Exhibits objected to shall be accepted pending a decision on the objection.”[33]

Recording the deposition.  All deposition testimony “shall be taken with any questions and answers recorded in their regular order.”[34]   This may be performed by the officer or “some other disinterested person in the presence of the officer, unless the presence of the officer is waived on the record by agreement of all parties.”[35]

Objections during the deposition.  During a deposition, a party may make “[a]ny objection to the content, form, or manner of taking the deposition.”[36]  This includes objections to exhibits,[37]  “the qualifications of the officer, the manner of taking [the deposition], the evidence presented, [or] the conduct of any party”.[38]  Any such objection is waived “unless made of the record during the deposition and preserved in a timely filed motion to exclude.”[39]  Thus, the objection cannot be raised after the deposition is done.

A Certified Transcript of the Deposition Must be Made and Filed

Following the deposition, the officer must “prepare a certified transcript” of the proceedings.[40]    This requires “attaching a certificate in the form of an affidavit signed and sealed by the officer to the transcript of the deposition.”[41]  Unless otherwise agreed to by the parties, the certificate by default must state the following:

(i) The witness was duly sworn by the officer before commencement of testimony by the witness;

(ii) The transcript is a true record of the testimony given by the witness;

(iii) The name of the person who recorded the testimony, and if the officer did not record it, whether the testimony was recorded in the presence of the officer;

(iv) The presence or absence of any opponent;

(v) The place where the deposition was taken and the day and hour when the deposition began and ended;

(vi) The officer has no disqualifying interest, personal or financial, in a party; and

(vii) If a witness refuses to read or sign the transcript, the circumstances under which the witness refused.[42]

Also by default, “the proponent of the testimony” is required to provide “a copy of the transcript to all other parties” and file a copy of the transcript as an exhibit.[43]  The parties, however, may agree otherwise.[44]

The Board Rules also require that “the witness … read and sign (in the form of an affidavit) a transcript of the deposition.”[45]  This requirement, though, may be modified by the parties.[46]    The affidavit is also not required where “[t]he witness refuses to read or sign the transcript of the deposition.”[47]

  1. See http://www.gpo.gov/fdsys/pkg/FR-2012-08-14/pdf/2012-17900.pdf.
  2. 37 C.F.R. § 42.53(a).
  3. 37 C.F.R. § 42.53(a).
  4. 37 C.F.R. § 42.52(a).
  5. 37 C.F.R. § 42.52(a).
  6. 37 C.F.R. § 42.53(a).
  7. 37 C.F.R. § 42.52(a).
  8. 37 C.F.R. § 42.52(b)(1)(i).
  9. 37 C.F.R. §§ 42.53(c)(1), (d), (g).
  10. 37 C.F.R. § 42.53(d)(5)(ii).
  11. 37 C.F.R. § 42.53(d)(2).
  12. 37 C.F.R. § 42.53(d)(2).
  13. 37 C.F.R. § 42.53(g).
  14. 37 C.F.R. § 42.53(g).
  15. 37 C.F.R. § 42.53(b)(2).
  16. 37 C.F.R. § 42.53(b)(2).
  17. 37 C.F.R. § 42.53(c)(1).
  18. 37 C.F.R. § 42.53(c)(1).
  19. 37 C.F.R. § 42.53(d).
  20. 37 C.F.R. § 42.53(d)(1).
  21. 37 C.F.R. § 42.53(d)(1).
  22. 37 C.F.R. § 42.53(d)(3).
  23. 37 C.F.R. § 42.53(d)(3).
  24. 37 C.F.R. § 42.53(e).
  25. 37 C.F.R. § 42.53(d)(4).
  26. 37 C.F.R. §§ 42.53(d)(5)(i)-(iii).
  27. 37 C.F.R. § 42.53(d)(5)(iv).
  28. 37 C.F.R. § 42.53(6).
  29. 37 C.F.R. § 42.53(6).
  30. 37 C.F.R. § 42.53(f)(1).
  31. 37 C.F.R. § 42.53(f)(3).
  32. 37 C.F.R. § 42.53(f)(3).
  33. 37 C.F.R. § 42.53(f)(3).
  34. 37 C.F.R. § 42.53(f)(2).
  35. 37 C.F.R. § 42.53(f)(2).
  36. 37 C.F.R. § 42.53(f)(8).
  37. 37 C.F.R. § 42.53(f)(8).
  38. 37 C.F.R. § 42.53(f)(4).
  39. 37 C.F.R. § 42.53(f)(4).
  40. 37 C.F.R. § 42.53(f)(6).
  41. 37 C.F.R. § 42.53(f)(6).
  42. 37 C.F.R. § 42.53(f)(6).
  43. 37 C.F.R. § 42.53(f)(7).
  44. 37 C.F.R. § 42.53(f)(7).
  45. 37 C.F.R. § 42.53(f)(5).
  46. 37 C.F.R. §§ 42.53(f)(5)(i)­‑(ii).
  47. 37 C.F.R. § 42.53(f)(5)(iii).