Patent interferences are inter partes proceedings conducted by the U.S. P.T.O. Board of Patent Appeals and Interferences and are used to determine which of two or more parties was the first to invent a claimed invention. To support motions filed in an interference proceeding, the parties submit direct testimony as written affidavits. Guidelines for the cross examination of witnesses submitting affidavits have been developed by the Board and available since at least September 2000. In a long overdue opinion, an expanded panel of the Board of Patent Appeals and Interferences provided “clarification” regarding its Cross Examination Guidelines. Parvarello v. Lan, Patent Interference No. 105,394, Paper 85, January 12, 2007.
The opinion clarifies a number of issues:
- Stipulations between the parties that the failure to state the basis for an objection does not constitute a waiver of that objection are improper. Any objection to the admissibility of evidence during cross examination must be stated concisely and in non-argumentative and non-suggestive manner and must include the legal basis for the objection.
- Blanket objections which do not state a basis for the objection are improper. An example of a blanket objection is when an attorney merely states “objection” and provides no basis for the objection.
- A number of types of objections and discussions by attorneys during a deposition are improper. For example, objections stating that the question is ambiguous, not clear or vague are improper. Proper objections include hearsay, document not authenticated, and leading and beyond the scope of the direct testimony. It is up to the witness, not opposing counsel, to ask for a clarification. Likewise, it is not up to opposing counsel to note any confusion.
- The Board noted that the administrative patent judge (APJ) should be called to settle disputes – the APJ is “but a phone call away.”
- Questions regarding how affidavit / direct testimony were prepared should be avoided. Although a majority of Federal Courts have determined that such questions are proper, they are to be avoided during interference crossexaminations.
The Board stated that it does not matter how a declaration for direct testimony was prepared, e.g., who suggested what, what changes were made, how drafts and the final declaration were transmitted to a witness for signature, etc. Instead, the Board stated that what matters is what is said on the merits, e.g.,
- identification of credentials,
- explanation of an invention,
- explanation of prior art,
- explanation why an invention would not be expected to “work,”
- an underlying basis for opinions stated by experts and (6) events related to conception, diligence and actual reduction to practice.