Deposition Do’s and Don’ts: The Patent Interference Bar Is Warned

by Judge Bruce Stoner and Jill Browning

Senior Administrative Patent Judge McKelvey authored an opinion on January 12, 2007, joined by Chief Administrative Patent Judge Fleming and Administrative Patent Judges Schafer, Hanlon, Lane and Tierney.  The expanded panel addressed part of a Motion to Exclude Evidence filed by senior party Lan in Pevarello v. Lan, Patent Interference No. 105,394 (January 12, 2007), wherein party Lan sought the exclusion of evidence based on alleged violations of the Cross Examination Guidelines during a deposition.  The panel did not rule on the admissibility issues, but took the “opportunity to address practice under the Guidelines” as well as address permissible deposition testimony relating to the creation and execution of direct testimony affidavits.  Pevarello, at p. 2.   

In interference proceedings, depositions are largely limited to the “cross-examination” of a witness who has given written affidavit evidence in support of a motion.  The Trial Section adopted Guidelines to govern the cross-examination of witnesses, included as an appendix to the Standing Order of January 3, 2006. See Appendix: Cross Examination Guidelines. The Guidelines were modeled after Hall v. Clifton Precision, 150 F.R.D. 525 (E.D. Pa. 1993), and the Board invited the bar to review that decision to answer questions that may arise with respect to deposition practice in interference proceedings.  

It is not likely that the attorneys here were the only ones to have ever violated the Guidelines; if that were the case, the Board would not have felt the need for such an expanded discussion.  Presumably, the Trial Procedures Section of the Trial Division of the Board wanted to make clear that it was dead serious about the Cross Examination Guidelines and saw this case as a textbook example of the sort of behavior it would like to discourage.  Expanding the merits panel by the addition of Judges McKelvey and Schaffer, judges of long experience in inter partes matters, and the addition of Chief Judge Fleming, was clearly designed to send a message that the Guidelines are Board policy in interference proceedings before the Trial Procedures Section of the Trial Division of the Board. Applying the Guidelines to the case at hand, the Board emphasized the following practice points, with the aim toward re-establishing more decorum and control during a deposition.   

Practice Points:

1. Blanket objections waive the objection: An attorney lodging an objection during a deposition must state the legal basis for the objection.  “Motions to exclude based on blanket objections [a naked objection] will not be considered because blanket objections during a deposition fail to comply with Guideline [3].”  Pevarello, at p. 7. The legal basis for an objection, moreover, “must be found in the rules governing admissibility of evidence for contested patent cases, including the Federal Rules of Evidence.”  Id. at p. 6.  
   The Board determined that the parties’ stipulation to the contrary (the parties agreed that failing to state the basis for an objection would not waive the objection) abrogated Guideline 3 and was, thus, not proper. 
2. Failing to object waives objection; objection as to the “form” of question is improper:  The parties also stipulated that “all objections are reserved until the time of trial, except those objections that are directed to the form of the question.” The Board made clear that failing to object during a deposition acted as a waiver of the objection, noting that in interference proceedings, there is no subsequent “trial.”  Pevarello at p. 18.   The Board further concluded that, in patent interference cases, counsel may not object to a question based on the “form” of such question.  The Board concluded that “form” objections are not sanctioned by the Federal Rules of Evidence and, thus, are improper in patent interference proceedings. Id. at p. 18. 
3. Limit exchanges between counsel – call the Board instead:  Throughout the opinion, the Board cited many examples of, and admonished both attorneys for, debating the merits of an objection on the record.  The Board stressed that the objection and its legal basis must be stated in a “non-argumentative and non-suggestive manner”.  Pevarello, p. 5.  Should counsel continue to disagree regarding objections, particularly with respect to whether a certain line of questioning is proper, the Board invited counsel to call the administrative patent judge to resolve the dispute in real time.  Id. at p. 19.
4. Defending attorneys should not ask for clarification of a question or an answer:  The Board criticized defending counsel for seeking clarification, on behalf of the witness, of a question, stating that this practice contravenes Guideline 1 (“At the beginning of a cross-examination, the party conducting the cross-examination may instruct the witness on the record to ask deposing counsel … for clarifications… See ¶ Guideline [1], Appendix to Standing Order, p. 71). The Board placed the burden of seeking clarification of a question squarely on the testifying witness, indicating that the Board found no legal basis for objecting to a question as “ambiguous, not clear or vague.”  Id. at p. 10.
   The Board further admonished defending counsel not to attempt to “clarify” the witnesses’ testimony, as that amounts to the “lawyer [taking] over control of the case from the Board.”  Id. at p. 14.  Thus, the defending attorney should not restate or question the witnesses’ testimony under the guise of an objection or correcting the record. 
5. Prepare your witness before the deposition -- not during the deposition: The Board strongly discouraged comments made by the defending attorney that could be perceived as “coaching” the witness to give (or stop giving) certain testimony.  This not only violates Guideline 3 (“Counsel must not make objections or statements that even remotely suggest an answer to a witness.”  See ¶ Guideline [3], Appendix to Standing Order, p. 72), but also the “decorum rule” of 37 CFR §41.1(c) (2006) (“Decorum. Each party must act with courtesy and decorum all proceedings before the Board, including interactions with other parties.”)
   The Board demonstrated a lack of tolerance for these antics, determining that the following remark made by counsel during the Witnesses’ answer: “‘I’m going to object because there’s no question pending’ translated into plain English means ‘Do not say anything more.’”  Id. at p. 15.  The Board also criticized counsel for coaching the witness when he objected to a question based on misstating the witnesses’ prior testimony.  The Board placed the burden of pointing out misstatements on the witness and indicated that the proper time for the defending attorney to clarify the witnesses’ testimony is on re-direct.  Id. at p. 17.  
6. Avoid questions regarding the preparation of declarations:  The Board then turned to a separate, but related, topic regarding appropriate/inappropriate lines of questioning regarding the preparation of an affidavit or declaration.  According to the Board, attorneys should not question the witness regarding the mechanics of preparing the declaration, absent some compelling reason.  Id. at p. 23.  Thus, attorneys should refrain from asking who drafted the declaration (whether it was counsel or the witness), whether there were prior inconsistent drafts or whether there were discussions between counsel and the witness.  The Board, recognizing that its position conflicts with the majority interpretation of Rule 26(a)(2) of the Federal Rules of Civil Procedure, supported its decision with reasons given in the August 2006 American Bar Association report that advocates amending Rule 26 to limit expert discovery.  The Board also noted that the Federal Rules of Civil Procedure do not apply in interference cases before the Board.  The deposition of a witness should focus on the merits of the declaration, including: (i) The witnesses’ credentials; (ii) The invention; (iii) Relevant prior art; (iv) The basis for facts and opinions; and (v) Facts/issues relating to conception, diligence and reduction to practice.  Id. at p. 22.

The panel hearing the interference (Administrative Patent Judges Hanlon, Lane and Tierney) will now, in view of the opinion, rule on Lan’s Motion to Exclude the Evidence. Failing to follow the Cross Examination Guidelines risks the imposition of sanctions under 37 CFR § 41.158, as noted in the Standing Order, ¶ 128.  The potential sanctions under § 41.158 can be serious, and include entry of: (1) An order holding certain facts to have been established in the proceeding; (2) An order expunging, or precluding a party from filing, a paper; (3) An order precluding a party from presenting or contesting a particular issue; (4) An order precluding a party from requesting, obtaining, or opposing discovery; (5) An order excluding evidence; (6) An order awarding compensatory expenses, including attorney fees; (7) An order requiring terminal disclaimer of patent term; or (8) Judgment in the contested case.

Note: Judge Bruce Stoner spent seventeen years hearing patent appeals, including eight years as Chief Judge of the BPAI. In 2003 he joined the Greenblum & Bernstein firm. Jill Browning is a partner at the same firm and a director of the APLF.

Comments

[Joe Smith]

"The Board also criticized counsel for coaching the witness when he objected to a question based on misstating the witnesses’ prior testimony."

Must be a different world. Where I come from it is considered highly improper for a lawyer to misquote the witness's evidence back to him and a proper ground of objection by counsel.

[Brad Pedersen]

While it appears that most of the admonitions set out by the Board were well deserved in this case, I have concerns about the underlying philosophy expressed in the opinion that it is up to the witness to raise objections to the form of questions. In an ideal world of PHOSITA and other legal fictions, such a philosophy might make sense; but in the practical world of lawyers trained for years in the art of depositions and subtle questioning and deponents terrified at the very thought of having to testify at all, this kind of idealized philosophy is more likely to result in leading lambs to slaughter than producing a clean and efficient deposition transcript for the Board.

Even though almost all lawyers would strenously object to the question "Did you beat your wife again last night?", the Board's opinion seems to imply that objections for vagueness, lack of foundation should not be made in response to such a question. Hopefully, the Board will recoginze there is a balance that needs to be struck between a clean record with no coaching of the witness and protection of the witness from trick questions. If the Board wants a party to argue the objections in a motion to exclude, it seems more reasonable that the basic objections need to be made "in line" during the testimony (i.e. objection, vague or lack of foundation) without any other instructions to the witness and with the witness then answering the question or, as the Board suggests, asking counsel for assistance in clarifying the question.

As part of decorum and courtesy between counsel, it is not uncommon for counsel asking the questions to inquire as to more details from opposing counsel for an objection as to vagueness or lack of foundation at the time an objection is made in order to have an opportunity to cure that objection by reasking the question. Often, this exchange can be short-circuited by a brief explanation of the basis or the objection in the objection itself. (e.g., Q: "Did you have an opinion as to X?" "Objection, vague as to time." Q: "Prior to date y, did you have an opinion as to X?"). If the Board's opinion is followed to the letter, such time saving exchanges would not be permitted out of an abundence of concern for coaching of the witness.

There is certainly an opportunity for lawyers to abuse the system in cross-examination depositions; but the Board is urged to recognize the value of adopting a middle-of-the-road position on these issues so as not to throw the baby out with the bath water.

[Michael Risch]

"Where I come from it is considered highly improper for a lawyer to misquote the witness's evidence back to him and a proper ground of objection by counsel."

Funny you say this, because where I come from "misstates prior testimony" is one of the most misused and improper depostion objections there is.

[Joe Smith]

"Funny you say this, because where I come from "misstates prior testimony" is one of the most misused and improper depostion objections there is."

The objection can be misused - that is a different problem. If the lawyer has truly misquoted the prior evidence then the objection should be viewed as proper I have seen a lawyer misquote the written words on a page to the witness. If those types of questions are not caught you wind up with a misleading transcript where no one can be sure what the witness meant.

[Benjamin Kimball]

I'm a wet behind the ears newly minted lawyer who hasn't even passed the Bar Exam yet. Please forgive my ignorance, but, doesn't this opinion really just caution lawyers to follow the rules?

It seems to me, and forgive me again for my ignorance, that the opinion puts into place a mechanism for addressing issues should counsel not adhere to the rules, "Should counsel continue to disagree regarding objections, particularly with respect to whether a certain line of questioning is proper, the Board invited counsel to call the administrative patent judge to resolve the dispute in real time. Id. at p. 19."

I expect there are few things that get opposing counsel back on track like your picking up the phone and calling the Judge.

[Cass L. Singer]

Benjamin, you will soon learn that few judges (if any) enjoy taking time from a busy docket to listen to the petty bickering of lawyers over the mere form of a question. The more sensible procedure is to take the testimony subject to the objection (as provided under most rules of procedure) and resolve any objections when introduction of the testimony is actually sought. Yes, you take a chance the testimony won't come in, but at least by the time its introduction is sought, the parties will know whether it is worth arguing over the objection.

Unfortunately, interference practice is so arcane (I'm being kind here) that some but probably not all of the guidelines recited above are compelled by existing rules. But let's get real; should a tribunal rely upon a prior decision so obscure that it didn't make it into the Fed Supp, but only the FRD or (worse yet) a mere bar association *report*?

As for the particular example of an attorney objecting to a question as vague, both experience and common sense tell us that the better procedure is to allow either side to ask the witness, after the objection is made, whether he or she understood the question that was asked. I'm not at all certain that the interference rules expressly allow a witness to even object to a question.

Perhaps most important to note is that the opinion by this panel failed to address the admissibility issues raised by the underlying motion. Absent a decision on the motion, the panel's pronouncement was better suited either for promulgation as formal rule-making, or for inclusion in a practitioner's guide to appearing before the board. Absent a decision on the motion and a thorough grounding in the facts before the panel, the self-styled "opinion" recites mere dicta -- dicta we would be wise to pay attention to, but dicta all the same.

[Patent Hater]

Speaking from the perspective of a "poor deponent"...

what I'd really like to see the Board suggest are some rules that would prevent opposing counsel from going on an unabashed fishing expedition for non-patent related information that is of competitive advantage to the opposition. The most shocking thing I learned from the discovery and deposition process was how difficult it is to keep an unscrupulous opposing lawyer from asking questions, which while wholly unrelated to the patent issue at hand, must still be answered without objection. The patent system of today is far removed from what Mr. Jefferson had in mind originally.

[John Rizvi]

Dennis,

Great post. I want to comment on practice point number 3:

"the Board invited counsel to call the administrative patent judge to resolve the dispute in real time".

I tend to agree with Benjaman Kimball and question whether judges really mean it when they "invite" counsel to call them to resolve disputes regarding something such as the form of a question. I would use this approach EXTREMELY sparingly in practice.

John Rizvi
Registered Patent Attorney
Florida Intellectual Property Law Blog
( http://www.FloridaIPBlog.com )