There has been much discussion about whether Patent Owners should have the right to submit new testimonial evidence with the preliminary response. The patent office has officially proposed just such a rule and is considering public comments as part of the rulemaking process (update: the new rules are here and authorize preliminary declarations). Patent Owners may, in theory, already do this with prior Board authorization. The issue is whether it should be allowed without prior authorization. The Board’s principal stated concern with such a blanket rule is that it would place further burdens on the Board in meeting the statutory deadline to reach institution decisions within three months.
On its face, allowing new testimony by Patent Owners seems to bring balance to the institution decision, because nearly all petitions are accompanied by testimonial evidence. But I expect that uncompelled direct testimony would rarely, if ever, be used by the Board to deny institution or even to limit the issues for trial. Why? Because direct testimony is untested. In theory any statement of fact or opinion expressed in direct testimony could be undermined in cross-examination. So although the Board is comfortable deciding whether the Petitioner’s expert direct testimony provides sufficient evidence to institute a trial, that decision is necessarily a preliminary one, and the weight the Board ultimately accords the Petitioner witness’s testimony is not decided until after the Patent Owner has had an opportunity to test that evidence in cross-examination. But an institution decision in favor of the Patent Owner is a final decision that deprives the Petitioner of the relief requested. The Board will not deny the Petitioner relief solely on the basis of the untested direct testimony of a Patent Owner witness, because the Petitioner could, in theory, demolish that evidence in cross-examination. So why not allow cross-examination of the Patent Owner’s preliminary response witness in a pre-institution reply? That simply would compress the trial into the preliminary phase and aggravate further the burden on the Board to issue institution decisions within three months.
I propose an alternative. The Patent Owner may convince the Board to authorize a limited deposition of the Petitioner’s witness in the preliminary stage. The Board might do this if it were persuaded, say, that the Petitioner’s case is largely dependent upon a single factual assertion that appears creditable on its face but that is likely to be negated in cross-examination. In such a situation, the Patent Owner could argue that an entire trial might be avoided by permitting a brief cross-examination focused on that one particular fact issue. The Patent Owner then would be authorized to submit with the preliminary response new testimonial evidence in the form of the Petitioner witness’s deposition testimony.
The Board then can evaluate the Petitioner’s witness declaration testimony in light of the deposition testimony. It can make a full credibility determination and decide whether the deposition testimony undermines the weight accorded to witness’s evidence. Used selectively and narrowly, this technique can help Patent Owners avoid or limit issues for trial.