In a recent decision on a motion to exclude evidence, an expanded panel of Administrative Patent Judges of the U. S. Patent and Trademark Office Board of Patent Appeals and Interferences (the Board) took the opportunity to address what constitutes proper deposition practice under the Cross Examination Guidelines appended to the Trial Section’s Standing Order of January 3, 2003. Pevarello v. Lan, Pat. Interf. No. 105,394 (P.T.O. Bd. Of Pat. Appeals and Interf., Jan. 12, 2007). The USPTO Guidelines were based on a 1993 district court decision, in Hall v. Clifton Precision.

In an interference proceedings, direct testimony is presented to the Board either by affidavit or declaration. Cross-examination is by way of deposition testimony. The Board almost never conducts a hearing with live testimony in an interference proceeding. Decisions by the Board in interference proceedings are based on the written record.

Lan filed a motion to exclude evidence because of cross-examination violations by defending counsel for Pevarello. In its motion, Lan suggested that “the Patent Bar needs clarification as to whether … [certain action] falls inside or outside … the [Board] Guidelines.” Based on Lan’s request, the expanded Board panel took the opportunity to address deposition practice under the Cross-Examination Guidelines, probably because of practices experienced in this and other interference proceedings. The Board’s opinion showed that there are significant differences between deposition practice in USPTO proceedings as compared with federal and state court proceedings.

First, counsel using a “blanket” objection in defending a witness will not prevail in any motion to exclude evidence, even if the parties agree to use of “blanket” objections. The Guidelines require that each objection “must include the legal basis for the objection.” Among the suitable legal basis cited in the opinion, are “hearsay,” “document not authenticated,” “leading question” or “beyond the scope of the direct testimony.” While not specifically mentioned in the opinion, more than likely objections such as “lack of foundation” and “asked and answered” would also be acceptable.

Second, defending counsel must refrain from judging or objecting to the clarity of a question asked of the witness. If a question is “ambiguous, not clear or vague,” it is the witness who must ask for clarification, not defending counsel. Further, if the witness responds to a statement made by opposing counsel where no question has been asked, it would be improper to move to strike or otherwise object because no question was asked.

Third, an objection that the witness’s testimony has been “mischaracterized or misstated” is inappropriate. According to the Board, “[i]t is up to the witness to inform questioning counsel that the witness’s testimony has been mischaracterized or misstated” and that defending counsel should “clear up the ‘misstatement’ on redirect.”

Fourth, the Board made it clear that “there is no objection under our rules or the Federal Rules of Evidence based on the ‘form of the question’” and that an “objection to the form of the question should not be made in patent interference cases” (emphasis supplied).

Fifth, if there are disagreements between counsel during the deposition, the deposition should be suspended and a phone call placed to the judge.

Sixth, questions regarding the preparation of the witness’s affidavit or declaration—such as who prepared it, the number of drafts, who suggested changes, number of meetings and what was discussed at the meetings—are, according to the Board opinion, “a waste of time, both for the witness and the Board.” No matter how the affidavit or declaration was prepared, once it is signed, the Board will presume that “the witness agrees with the content.”

Practice Notes: In addition to what is obvious from the above, when preparing a witness for deposition testimony in an interference proceeding, instill in the witness the importance of not speaking until a question has been posed. Witnesses must also understand that it is their job to inform examining counsel when prior testimony is being misstated or misrepresented. Also, witness should be sensitive to consider each question carefully and, if any term in any question posed is ambiguous in any way, to ask for clarification. Remind the witnesses that, in the absence of another ground of objection that may be proper under the Cross-Examination Guidelines, he will be bound by any answer given.