Yes, the Patent Trial and Appeal Board (“PTAB”) may allow live testimony in an inter partes review (“IPR”). No, this does not entirely alter IPRs. Last week the PTAB stood their ground in a request to rehear their decision to allow live testimony. This post briefly addresses both the request for rehearing and the original order. The original order shows why oral testimony was inevitable and why it will only happen in rare cases.
The rehearing was granted in part, but the judges held their ground in allowing live testimony. In K-40 v. Escort, Inc., the judges found good cause for hearing the inventor, Mr. Orr. The PTAB was not persuaded by the argument that the petitioner had no further questions for the inventor. Nor was the PTAB persuaded when K-40 said the judges failed to consider the video record. In fact, the judges pointed to their original opinion to show where they considered the video record. The special circumstances in the original opinion show why the judges found good cause.
The original order shows why K-40 is a special case. The judges looked to the Trial Practice Guide and saw that the Board provided for live witnesses when needed. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The patent judges then took the guidelines and listed some factors for when testimony might be needed. First, the Trial Practice Guide shows that live testimony might be necessary when a case turned on a witness’s credibility. Id.at 48762. Here, the outcome of the IPR may turn on Mr. Orr’s testimony because he is a fact witness trying to antedate the prior art. Second, the patent judges addressed Mr. Orr’s status as a fact witness. An expert’s credibility rests in their methods, not their candor. Mr. Orr, however, is not an expert in this case. His candor might be a critical issue. The judges stated that this does not create a “de facto” rule to allow live testimony. K-40 Electronics, LLC v Escort, Inc., IPR2013-00203, slip op. 2 (PTAB Paper 34 (May 21, 2014)). Instead they reasoned that, “live testimony will be necessary only in limited circumstances…on a case-by-case basis.” Id. at 3. The Board saw “no possibility that…live testimony will become the norm rather than the exception.” Id.
Live testimony was bound to happen. The Board provided for live testimony in the Trial Practice Guide. It was intended to happen in rare circumstances when the judges needed to see the witness in person. That is what happened in this case. While the full effects will play out over time, this decision should not open the floodgates for live testimony. Live testimony will most likely occur in rare cases when the patent’s validity hinges on a fact witness.