New Precedent Clarifies Previous Uncertainty

Discussing testimony with a witness during a PTAB deposition is a “no-no”….kinda. The Trial Practice Guide (Appendix D) makes clear that counsel may not confer with its witness while under cross-examination. Panels have issued conflicting decisions on whether that prohibition extends to redirect testimony occurring after cross-examination is complete.

In a precedential designation today of a 2014 case, Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), the Board settled that question.

In Focal the Board held that counsel may confer with a witness after cross-examination has concluded and before redirect begins (here), reasoning:

[T]he Testimony Guidelines state that once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel may not, for example,” suggest to the witness the manner in which any questions should be answered. . “Cross-examination” here refers to either cross-examination or re-cross, but does not refer to the entire time frame between when cross-examination commences, and until re-cross examination concludes. The prohibition of conferring with the witness ends once cross-examination concludes, and, if relevant, begins again when re-cross commences, and continues until re-cross concludes. The prohibition does not exist, however, during the time frame between conclusion of cross-examination and start of re-cross. . . .

We note that parties may confer before a deposition occurs, and agree among themselves regarding such matters. For example, the parties may agree in advance of a deposition that counsel may not confer with a witness until after the deposition is over, i.e., after re-cross, if any occurs.

(Internal citations and quotations omitted)

Practitioners should consider arriving at an agreement on this issues and memorializing it in their deposition notices so that the Board will have it handy prior to any live deposition dispute.