K-40 Elecs., LLC v. Escort, Inc.

When a patent owner moves under 37 C.F.R. § 42.70 to present live testimony at final oral argument, the Board may grant it on a case-by-case basis for good cause, for example where the witness's demeanor is critical to assessing credibility. A fact witness whose testimony may be case-dispositive, such as an inventor offering antedating declarations, can justify it. The Board may restrict the testimony to cross-examination and redirect limited to the declaration. No prior precedent directly addressed this issue; the Board relied on the Office Trial Practice Guide's statement that live testimony will be necessary at few oral arguments. For the petitioner, the order means it may have to cross-examine a key fact witness live before the panel, and it cannot defeat the request by calling it "additional discovery" under the Garmin interests-of-justice factors or by arguing it creates a de facto rule. For the patent owner, live testimony is available when its inventor's credibility may decide the case, but only as tightly limited cross-examination and redirect, with direct testimony fixed by the declaration. The Board cited Andreu v. Sec'y of HHS, 569 F.3d 1367, 1379 (Fed. Cir. 2009), for the point that credibility of fact witnesses turns on demeanor while expert credibility turns less on it. LEGAL TEST OR STANDARD: Good cause, decided case by case. Live testimony will be necessary only in limited circumstances. Factors to be considered may include the importance of the witness's testimony to the case, i.e., whether it may be case-dispositive, and whether the witness is a fact witness rather than an expert, since the credibility of experts often turns less on demeanor and more on the plausibility of their theories. The Board may occasionally require live testimony where it considers the demeanor of a witness critical to assessing credibility. TRIGGERING FACTS: The witness was the sole named inventor of the patent and of a related proceeding involving the same parties and technology, and was the principal fact witness (the decision's text calls him Petitioner's witness, apparently a slip for Patent Owner's). His declarations sought to antedate the only two references relied on by Petitioner, so his testimony was key and might be case-dispositive. Similar declarations had been used to overcome the same references in other USPTO proceedings. Petitioner opposed, calling the motion a request for additional discovery. KEY QUOTE: "The Board envisions that live testimony will be necessary only in limited circumstances and intends to approach requests for live testimony on a case-by-case basis." (Paper 34, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board rejected treating the motion as additional discovery subject to the Garmin interests-of-justice factors, and followed the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48762, 48768 (Aug. 14, 2012). PRACTICE TIP: If you need live testimony at oral argument, move under 37 C.F.R. § 42.70 and show that the witness is a fact witness whose demeanor and credibility may be case-dispositive. Propose a narrow format of cross-examination and redirect limited to the declaration. If you oppose, argue specific facts, because the Board will not accept a de facto or per se rule argument.