PTAB / Board Discretion / Discovery

PTAB deposition rules permit conferring with a witness after cross-examination

By Deakin T. Lauer Published July 29, 2019

The PTAB recently designated as precedential an order clarifying when counsel may confer with a witness during a deposition.

The Testimony Guidelines state:

Once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not: (a) consult or confer with the witness regarding the substance of the witness’ testimony already given, or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a Board order; or (b) suggest to the witness the manner in which any questions should be answered.

77 Fed. Reg. 48756, 48772 (Office Patent Trial Practice Guide, Appendix D) (emphasis added).

The order, issued in Focal Therapeutics, Inc. v. Senorx, Inc., advises that although counsel is prohibited from conferring with a witness during crossexamination, that prohibition does not exist during the time frame between the conclusion of crossexamination and before the start of any redirect testimony. However, the prohibition would start again during the commencement of any re-cross, and would continue until re-cross concludes.