After the America Invents Act (AIA) passed with a vote of 304-177 in June 2011, inventors seeking patents had to be the first to file to lay claim to their innovations. As the first major shift in patent law since 1952, changes in AIA sought to reduce the number of patent battles that made it to court.
The ongoing list of new inter partes reviews indicates clearly how common the use of reexamination in patent infringement litigation is. Approaching an AIA trial deposition is starkly different from a standard litigation deposition, and there are 4 elements of AIA depositions that litigators must know to handle them appropriately.
Scope of Discovery Is Significantly Limited
Federal Rule of Civil Procedure 26 outlines the scope of discovery for district court cases, but a much narrower set of rules governs AIA trial discovery. 37 CFR 42.51 limits discovery to information that is inconsistent with exhibits that corresponds with papers or testimony, positions advanced by certain parties, or cross-examination of an affidavit testimony.
Largely, the scope of examination stays limited to help the presiding justice make a clear decision quickly, but it can be expanded by permission from the Patent Trial and Appeal Board (PTAB). In most cases, both parties must mutually agree to extend the scope of discovery, but even in a disagreement, one party can seek additional discovery by proving that it is in the interest of the justice.
The Patent Trial and Appeal Board (PTAB) Does Not Permit Live Testimony
Though live testimony has occurred in such trials as K-40 Elecs., LLC v. Escort, Inc., IPR2013-00240, Paper No. 37 at 2 (P.T.A.B. Sept. 29, 2014), it is exceptionally rare and is explicitly a special-case scenario. A lack of live testimony substantially enhances the indispensability of AIA depositions.
Witnesses have to provide desired testimony either in an affidavit or during a deposition – otherwise, there is no avenue to access that testimony. Additionally, the original testimony must be as clear and complete as possible during the deposition since the witness will not have the opportunity to testify in front of a factfinder in court.
Less Is More Strategy Is Favorable
In an AIA trial deposition, it may be favorable to either the petitioner or the defender to keep information as focused as possible.
If a petitioner or a defender leaves out a vital piece of testimony, such as a clear description of a claim element in a prior art, it could sway the final decision on the AIA trial deposition by the justice. Similarly, the PTAB discourages the introduction of new opinions and evidence in reply briefs, which further limits the opportunity of witnesses to refine or change their deposition strategy.
Defending Attorneys May Only Lodge Limited Objections
Though the PTAB encourages lodging objections, attorneys working in AIA trial depositions must be careful about when and how they are lodged. Challenging an opponent’s line of questioning must occur during a deposition unless it is on the deposition record that all those party to the deposition agree otherwise.
Rethinking Strategy in AIA Depositions
Since AIA law aims to improve the efficiency of patent litigation, it’s imperative that attorneys who are working in patent infringement cases learn to keep discovery intently focused. It’s a practice far removed from the usual execution of depositions strategy wherein discovery is intended to be broad and far-reaching.
Success in an AIA trial deposition will be dependent on scrupulous research before deposing witnesses. Understanding the patent, its history, the claims set forth, and the exhibits available before the deposition will determine how attorneys keep lines of questioning framed for specific purposes, which will help litigators take full advantage of the much more focused rules that govern AIA trial depositions.