Focal Therapeutics, Inc. v. SenoRx, Inc.

When cross-examination of a deponent has concluded and re-cross has not yet begun, the Testimony Guidelines' prohibition on counsel offering the witness conferring with the witness (Appendix D, 77 Fed. Reg. 48756, 48772) does not apply, so counsel may confer with the witness before redirect. The prohibition applies only while cross-examination or re-cross is actually under way, and parties may agree in advance to broader limits. The Board clarifies how the Testimony Guidelines in Appendix D of the Office Patent Trial Practice Guide apply, and follows the earlier panel in Google Inc. and Apple Inc. v. Jongerius Panoramic Tech., LLC, IPR2013-00191, Paper 48 (PTAB, Feb. 6, 2014). For a party cross-examining a witness, there is no Board-imposed bar on the opposing counsel conferring with the witness between cross and redirect, so a cross-examiner cannot object on that basis. For the party offering the witness, counsel may prepare the witness for redirect in that gap, and the conference-call request here was denied as moot. The decision cites no Federal Circuit, CCPA or Supreme Court authority. LEGAL TEST OR STANDARD: The Testimony Guidelines provide that once cross-examination has commenced, and until it has concluded, counsel offering the witness on direct shall not (a) consult or confer with the witness regarding the substance of testimony already given or anticipated, except to confer on whether to assert a privilege or how to comply with a Board order, or (b) suggest to the witness the manner in which any questions should be answered. The Board reads cross-examination to mean either cross-examination or re-cross, not the whole period from the start of cross to the end of re-cross. TRIGGERING FACTS: In a July 14, 2014 deposition of Petitioner's expert, after Patent Owner's counsel finished cross-examination and before redirect began, Petitioner's counsel, over objection, privately conferred with the witness about redirect testimony. Patent Owner asked whether the guideline covers the entire deposition including redirect and re-cross. The rule applies to conferences in the gap between the end of cross and the start of re-cross. KEY QUOTE: "The prohibition does not exist, however, during the time frame between conclusion of cross-examination and start of re-cross." (Paper 19, p. 3) PRIOR PRECEDENT AFFECTED: Follows Google Inc. and Apple Inc. v. Jongerius Panoramic Tech., LLC, IPR2013-00191, Paper 48, 3 (PTAB, Feb. 6, 2014), which stated that counsel is permitted to confer with the witness before redirect examination begins. It applies the Testimony Guidelines at 77 Fed. Reg. 48756, 48772-48773 (Aug. 14, 2012). PRACTICE TIP: If you want to bar conferring with a witness between cross and redirect, or through the end of re-cross, get the other side to agree in writing before the deposition, because the Board will not impose that restriction on its own.