The Patent Trial and Appeal Board has granted in part the petitioner’s request for rehearing of an earlier decision permitting live inventor testimony at the final hearing in an IPR proceeding. The Board had recently granted the patent owner’s motion to present live testimony at the hearing, limiting each side to 30 minutes of testimony. The Board had found that the inventor’s testimony was key and could be case-dispositive. The petitioner requested rehearing of the Board’s decision, contending that it had no further questions for the inventor and should not be ordered to further cross-examine him. Granting the petitioner’s request for rehearing, the Board responded that it had not ordered the petitioner to cross-examine the inventor, but had merely given the petitioner an opportunity to question the inventor first. The Board now ordered the patent owner to examine the inventor first, following which the petitioner would have an opportunity to cross-examine him, if it chose to do so. The Board noted that it had authorized live testimony of the inventor because it was interested in observing “his demeanor in a live setting.” The petitioner also argued that such testimony was unnecessary given the availability of a video recording of the inventor’s deposition. The Board disagreed. “The Board was aware of the video record when it concluded that this case presents special circumstances warranting the presentation of live testimony,” the Board wrote. The Board, however, allowed the petitioner to submit and rely on portions of the video of the deposition in lieu of or in addition to the live cross-examination of the inventor at the hearing. The Board gave the petitioner five days after the final hearing to submit the video. The use of video-recorded testimony is allowed under 37 C.F.R. § 42.53(a) only where authorized by the Board, and the Board has required that such use be requested before the party’s deadline to submit evidence.
K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (PTAB May 30, 2014) [Giannetti (opinion); Perry; Ward]