Medtronic, Inc. v. Endotach, LLC and Trivascular, Inc. v. Samuels
In two recent inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) addressed the scope of permissible use of documents not included in the cited evidence of record, finding in one case the use was permissible because while the document was not cited it could still be within the scope of the deponent’s direct testimony and finding in the other case the use to be impermissible because it constituted a new document(s) that would prejudice petitioner. Medtronic, Inc. v. Endotach, LLC, Case No. IPR2014-00100 (PTAB, Aug. 28, 2014) (Fitzpatrick, APJ); Trivascular, Inc. v. Samuels, Case No. IPR2013-00493 (PTAB, Sept. 2, 2014) (Kamholz, APJ).
In the Medtronic case, the PTAB clarified the scope of documents that a party is permitted to use when cross-examining an expert witness. The patent holder objected to the petitioner’s cross-examination of the patent holder’s expert witness because the petitioner used documents that were not cited in the expert’s declaration. The PTAB overruled the objection, noting that the applicable rule only limits cross-examination to the scope of direct testimony, not to the specific documents cited or discussed in the witness’s expert declaration. As such, “[t]he fact that a document is not cited or discussed in a declaration is not dispositive,” and what matters is whether the line of questioning is consistent with the scope of the direct testimony.
In the Trivascular case, the PTAB explained that demonstrative exhibits must precisely reflect content found in the evidence of record. The PTAB sustained the petitioner’s objections to demonstratives in which the patent owner had made modifications to the evidence of record. For example, the patent owner had animated figures from the patent, added and removed reference numbers in another figure from the patent and provided text that was paraphrased from text found in the record. The PTAB instructed the patent owner to replace those particular demonstratives with content that was an “exact reproduction” of the evidence of record.
The PTAB did not, however, provide the patent owner with an opportunity to provide a replacement demonstrative when the objectionable content was not so clearly traceable to the evidence of record. In one instance, the patent owner submitted an animation that allegedly “visually replicate[d] its arguments concerning inflation of the claimed stent.” The Board found that content was not a mere modification of evidence existing in the record and could not be replaced.
Finally, the PTAB overruled the petitioner’s objections to a demonstrative which contained content that was reproduced exactly from record evidence, but that was allegedly not otherwise “cited or relied upon” by the patent owner. In that instance, the PTAB held that whether a party actually relies upon evidence is immaterial to the question of admissibility, but instead, goes to whether or not the PTAB will consider the evidence in reaching its final decision.
Practice Note: In IPR proceedings, parties may cross-examine expert witnesses using documents not cited or relied upon in the expert’s declaration, so long as the line of questioning falls within the scope of the direct examination. Parties have less flexibility with respect to use of demonstrative exhibits, however, which must include “exact reproductions” of evidence of record. Demonstratives may be admissible even if the party did not otherwise cite or rely on the particular evidence in the demonstrative.