In Medtronic, Inc. v. Endotach, LLC, the Patent Trial and Appeal Board (PTAB) rejected a patent owner’s attempt to limit the scope of the deposition of its witness to the documents discussed or cited in the witness’s declaration.  IPR2014-00453, Paper 32 (Aug. 28, 2014).

After receiving a deposition notice indicating that the petitioner intended to possibly use certain documents during a deposition of the patent owner’s witness, the patent owner requested a conference call with the Board.

Because the documents at issue (including a declaration the witness filed in district court and three U.S. patents), were not discussed in the witness’s declaration filed in the current IPR proceeding, the patent owner took the position that such documents were “outside the scope” of the witness’s direct testimony and therefore could not be used in the deposition per 37 CFR § 42.53(d)(5)(ii).

The Board sided with the petitioner, finding that such documents are not per se barred for use in depositions in PTAB trials.  In the Board’s view, there are “multiple scenarios in which other documents may be used for cross-examining a witness, while staying within the scope of his or her direct testimony.”

The Board therefore overruled the patent owner’s objection to use of the documents in the deposition, but noted that the patent owner would still be allowed to make scope-based objections to actual questions posed during the deposition.

As this decision shows, the Board tends to take a fairly pragmatic approach to deposition discovery and will not apply an overly-restrictive reading of the rules as they apply to depositions.