In Pacific Market Int’l v. Ignite USA, LLC, the PTAB authorized submission of six videos as exhibits along with the Patent Owner Response. IPR2014-00561, Paper 27 (Feb. 5, 2015).
37 C.F.R. § 42.53(a) states that “[u]ncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 U.S.C. 24, must be in the form of a deposition transcript. Parties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board.”
In accordance with 37 C.F.R. § 42.53(a), Patent Owner requested authorization to submit six video excerpts from the deposition testimony of an expert witness for Petitioner as part of its Patent Owner Response. Patent Owner argued that entry of the video excerpts should be granted because two of the video excerpts included visual demonstrations that were not reflected in the written transcript, and the remaining four video excerpts “would be helpful in assessing demeanor and . . . credibility” of the expert witness.
The Board authorized entry of the six video excerpts after determining the excerpts “may be helpful in reaching a final determination in [the] proceeding.” The Board’s decision noted that although Petitioner opposed submission of four of the video excerpts on the basis that their entry would cause delay and waste the panel’s time, “[w]hen queried by the panel in connection with the nature of the delay, [Petitioner] indicated that it did not believe that submission of limited video testimony would unduly interfere with the schedule for this inter partes proceeding.”
Some takeaways from this decision are:
- The Office Patent Trial Practice Guide, § I(F) states “[d]iscovery is a tool to develop a fair record and to aid the Board in assessing the credibility of witnesses.” Thus, a party requesting authorization to submit video-recorded testimony should identify how the video-recorded testimony would aid in the development of a fair record, and/or aid the Board in assessing the credibility of witnesses.
- Conversely, a party opposing a request for authorization to submit video-recorded testimony should provide substantive reasons why the video-recorded testimony would not aid in the development of a fair record and would not aid the Board in assessing the credibility of witnesses.