Any litigator will be familiar with the routine expectations of a deposition: eight hours in a conference room, gathering every fact and admission possible from a witness, and countless objections. Litigators may be surprised to know that depositions for an inter partes review (“IPR”) serve a drastically different purpose, and therefore come with a different set of logistics and considerations. While depositions in district court litigation are primarily focused on gathering facts and preparing impeachment, deposition testimony taken in an IPR is actual admitted testimony. Trials before the Patent Trial and Appeal Board (“PTAB”) very rarely include live testimony, and so deposition transcripts and affidavits/declarations are often the only testimonial evidence upon which the PTAB can rely.
What are the logistics for conducting a deposition?
If a party wants to conduct a deposition for one of its papers (equivalent to a brief or motion in district court litigation), that party must do so more than one week before the filing date of the paper. A notice of a deposition must be filed with the PTAB at least ten business days prior to the deposition date. This advance notice allows the PTAB to ensure a member of the panel is available should the parties need to contact the panel to resolve a dispute. However, as a practical matter, parties are strongly encouraged to resolve disputes that arise during a deposition without involving the PTAB.
Because the deposition takes testimony of a witness by an adverse party where the witness has previously testified by affidavit or declaration, the deposition is referred to as a cross-examination. The taking party has seven hours maximum for the cross-examination; however, most depositions rarely use the full time allotment. The defending party then has up to four hours for redirect, followed by up to two hours of re-cross. In practice, redirect and re-cross are extremely brief, if conducted at all. The topics and questions of each examination are limited to the subject matter of the preceding examination. That is, the cross-examination is limited to the direct testimony from the affidavit/declaration, the redirect is limited to the cross, and so on.
Unlike district court litigation, a video-recorded deposition for an IPR requires prior authorization by the PTAB. Speaking objections that could coach the witness (e.g., “vague”) are also prohibited. Much like district court litigation, the cost of producing the witness is on the defending party, whereas the cost of conducting the deposition (the facility, court reporter, and transcript) are borne by the taking party. The entire transcript of the deposition must be filed as an exhibit at the same time as the paper it supports. Similarly, all exhibits used during the deposition must also be submitted to the PTAB with the transcript.
What kinds of deposition questions should be asked?
Because depositions in IPRs are testimony, there are risks associated with conducting a deposition in the first place. There may be weaknesses in the witness’s direct testimony submitted as a declaration/affidavit, where conducting cross-examination via deposition could allow the witness to fill in the gaps. Similarly, if a proposed expert witness’s background and technical expertise could be insufficient and warrant exclusion of the opinion, it may help to avoid allowing that expert to bolster their credentials. And while questions are generally limited to the scope of the declaration/affidavit, the PTAB usually permits broader questions that go to a witness’s credibility and experience.
Because depositions are rarely recorded and the Board is highly unlikely to review the entire transcript, attorneys should attempt to elicit responses that can be easily quoted in a brief. This may require rephrasing questions in several different ways to draw out a “clean” response. And because the ultimate audience for the deposition transcript is a PTAB panel of judges with technical backgrounds, rather than a jury of laypersons, extremely detailed or technical questions may be more appropriate than in a district court deposition or cross-examination.
How to prepare a witness for a deposition
By far the most common depositions in the IPR setting are depositions of expert witnesses. It is extremely important that the witness be well-prepared for the deposition. This preparation generally encompasses two main aspects: coaching on deposition strategies and rigorous review of the record. The amount of time spent on reviewing deposition strategies will depend on the witness’s level of prior deposition experience and familiarity between the attorney and the witness. Expert witnesses that have not previously been deposed will generally require more preparation time, with a mock deposition strongly encouraged. A thorough review of the briefs and evidence on record, by both the witness and defending attorney, is also important. The witness must be careful not to make statements during the deposition that contradict or weaken previous positions taken in an earlier declaration or deposition, and a thorough knowledge of the record will go a long way toward achieving this goal. Additionally, the defending attorney should have a strong familiarity with the record to allow for timely objections when the questioning attorney strays outside of the scope of the witness’s prior testimony.
Fact witnesses, like the inventor, may also be deposed, especially in the case of pre-AIA patents where the date of invention (not filing) determines priority. Many of the same strategies noted above also apply for fact witnesses. However, it is more likely that a fact witness has never been deposed before, and thus may require additional preparation. In rare circumstances, fact witnesses may be permitted to provide live testimony during the oral hearing (in addition to providing testimony during a deposition).
In sum, depositions for IPRs are designed to produce testimony and not gather facts or impeachment material. As such, deposing attorneys must carefully consider what questions to ask a witness. The questions must be laser-focused to both undermine the witness’s direct affidavit/declaration testimony while preventing the witness from filling in recognized gaps.
 Declarations submitted by expert witnesses are considered direct examination. Direct examination by deposition is permitted, but is very rare and usually reserved for depositions of third parties.
Authors: Ryan Petty, Rick Bisenius, Dan Smith
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Dan Smith is a principal in the Dallas office of Fish & Richardson P.C. His practice emphasizes post-grant proceedings, patent prosecution, client counseling, and portfolio development. As a member of the firm’s post-grant group, Mr. Smith has extensive experience in post-grant proceedings from the perspective of both the petitioner and...
Rick Bisenius is a Principal in the patent group at Fish & Richardson’s Twin Cities office. His practice emphasizes patent post-grant proceedings (IPR and CBM), patent reexamination proceedings, US and foreign patent portfolio strategy and management, and due diligence investigations.
Mr. Bisenius has represented both petitioners...