FLIR Systems, Inc. v. Leak Surveys, Inc.

In an order issued after a post-conference call order, the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB or Board) denied patent owner’s request to file a motion seeking sanctions, suggesting a motion to exclude as a way to handle potentially inappropriate witness-coaching arising in the course of deposition testimony. FLIR Systems, Inc. v. Leak Surveys, Inc., Case Nos. IPR2014-00411 and -00434 (PTAB, Feb. 10, 2015) (McKelvey, APJ).

During a conference call with the Board, the patent owner suggested that inappropriate witness coaching may have occurred in a witness deposition after cross-examination but before redirect. The patent owner claimed, and counsel for the petitioner agreed, that during cross-examination of a witness, unexpected testimony came to light. At the conclusion of the cross-examination, a 30-minute recess was taken and off-the-record discussions took place between the witness and counsel for the petitioner. According to the patent owner, during redirect the witness “made an attempt to overcome, and possibly explain away, the unexpected testimony.”
The patent owner attempted to obtain further testimony from the witness relating to the nature of the conversations that took place during the recess but was rebuffed by petitioner’s counsel claim of privilege. Notably, during the deposition, neither party placed a call to the Board seeking a ruling on whether testimony concerning the recess discussions could take place. Instead, the patent owner essentially moved the Board for leave to obtain further information relating to the off-the-record recess conversations.

Similar to the position staked in Medtronic, Inc. v. Norred (IP Update, Vol. 17, No. 11), the Board demonstrated an unwillingness to serve as referee to petty squabbles. In particular, the Board noted that, to the extent a party believes that inappropriate witness coaching has occurred, it may be addressed first by a motion to exclude all or a portion of the testimony and, should such a motion be denied, through an argument as to the weight, if any, that the testimony be given.

The Board cited to the general problem associated with off-the-record discussions between counsel for a party and a witness testifying on behalf of that party during any recess taken after the conclusion of cross-examination but prior to redirect. Such conversations run the risk of the Board giving little or no weight to the testimony of a witness, should the witness be perceived as having been coached. However, the Board noted that any possibility of developing further information or evidence relating to what occurred during petitioner’s off-the-record recess conference with the deponent was waived when the patent owner did not seek the assistance of the Board when the petitioner claimed privilege. As the Board explained, should such practice be allowed, “[w]hen would it end?”

Practice Note: If you need the Board to act as a referee during a contentious deposition, immediate action is preferable to follow-up motions.