In Medtronic Inc. v. Troy R. Norred, the PTAB warned that “speaking objections” interposed by Patent Owner’s counsel during deposition of Patent Owner’s expert were improper under the Office Patent Trial Practice Guide, and that further violations of the Practice Guide could warrant sanctions, including exclusion of the primary declaration testimony from the witness being deposed.  IPR2014-00111, Paper 23 (Oct. 8, 2014).

During the deposition, the Petitioner initiated a conference call to the administrative judges to obtain guidance regarding the form of counsel’s objections.  The objection began, “Objection, misleading . . .” and went on to explain at some length that the question was misleading because it asked for a conclusion from the witness based on only a portion of a patent that Patent Owner contended was “taken out of context.”

The PTAB agreed with Petitioner that the objection was improper under the Practice Guide and instructed that counsel cease such objections.  The Practice Guide strictly prohibits “unnecessary objections, ‘speaking’ objections, and coaching of witnesses in proceedings before the Board.”  The Practice Guide specifies that an “objection must be stated concisely in a non-argumentative and non-suggestive manner” and “should be limited to a single word or term,” and that “Counsel must not make objections or statements that suggest an answer to a witness.”

As this decision shows, the PTAB takes seriously adherence to the Practice Guide during IPR proceedings.  Tactics that may be acceptable in district court litigation may not be appropriate in IPR proceedings, and their use in IPR proceedings could result in serious consequences.