PTAB: Counsel May Confer with Witness During the Timeframe Between Cross-Examination and Re-Direct

The Board recently provided guidance on deposition practice in AIA trial proceedings. The Trial Practice Guide prohibits counsel offering a witness from conferring with the witness “[o]nce the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded.”  77 Fed. Reg. 48772 (Aug. 14, 2012). The Trial Practice Guide does not specify how the prohibition of conferring with a witness applies in situations where the deposition involves re-cross and re-direct testimony.

The Board recently designated as precedential Focal Therapeutics, Inc. v. SenoRx, Inc., IPR2014-00116, Paper 19 (PTAB July 21, 2014) which addresses this issue. In Focal Therapeutics, petitioner’s counsel held a private conference with petitioner’s witness to discuss his redirect testimony. The conference was held after the conclusion of cross-examination and prior to redirect.  Citing the Trial Practice Guide, patent owner’s counsel objected to the conference between petitioner’s counsel and petitioner’s witness.

The Board determined that petitioner’s counsel was not prohibited from conferring with petitioner’s witness during the timeframe between the conclusion of cross-examination and the start of re-cross:

“Cross-examination” here refers to either cross-examination or re-cross, but does not refer to the entire time frame between when cross-examination commences, and until re-cross examination concludes. The prohibition of conferring with the witness ends once cross-examination concludes, and, if relevant, begins again when re-cross commences, and continues until re-cross concludes.  The prohibition does not exist, however, during the time frame between conclusion of cross-examination and start of re-cross.

The Board noted that its decision is consistent with Google Inc. v. Jongerius Panoramic Tech., LLC, IPR2013-00191, Paper 48 (PTAB, Feb. 6, 2014), where the panel determined that counsel is “permitted to confer with the witness before redirect examination begins.”

Parties should consider Focal Therapeutics when developing strategies for taking and defending depositions in AIA trial proceedings.