Takeaway: A request to present live testimony at oral hearing may be denied if the Board determines that observation of the witness’s demeanor would not be helpful in assessing the reliability of evidence, such as when the witness is an expert who will testify about the contents of third party scientific literature.

In its Decision, the Board denied Petitioner’s request to present live testimony from its expert witness at the hearing in this proceeding.

Petitioner had requested permission to present “limited testimony” from its expert “relating to his opinion on the appropriate k values for thin-film filters made using zinc sulfide” and, in particular, to a “90% transmission limitation” recited in certain claims. In response to an inquiry from the Board, Petitioner stated that “[t]he proposed testimony would track the direct testimony” provided in the expert’s declaration and “would also track the cross-examination testimony . . . previously elicited by [Patent Owner] and submitted to the Board.” Petitioner sought to re-present its expert’s previous testimony via live testimony so that the Board could “observe [the expert’s] demeanor while repeating his previous testimony.”

Patent Owner opposed the request.

The Board reviewed portions of the record (including Patent Owner’s Response, Petitioner’s Reply, and the expert declarations submitted by each side) and concluded that “the disputed issue of fact on which Edmund desires to present live testimony relates to the scientific reliability of various items of literature relied on by the parties.”  Petitioner’s and Patent Owner’s experts relied on different “items of scientific literature as evidence of the value of ‘k.’” The Board concluded that neither party appeared to contend that its expert had “personal knowledge of the value of ‘k’ apart from the scientific literature he relies on.” Thus, the Board “perceive[d] [Petitioner’s] motivation for presenting live testimony at the hearing is to attempt to bolster the weight of [Petitioner’s] items of scientific literature on the value of “k” through [its expert’s] personal presence in the hearing room.”

As the Board explained in its Decision:

“In an appropriate case, the Board may authorize or require live testimony in an IPR. See 37 C.F.R. § 42.53(a). For example, the Board may require live testimony where the Board considers the demeanor of a witness critical to assessing credibility. In an appropriate case, the Board may authorize or require live testimony in an IPR. See 37 C.F.R. § 42.53(a). For example, the Board may require live testimony where the Board considers the demeanor of a witness critical to assessing credibility. Live testimony may be requested by either party. Id. at 48768.”

In this case, the subject matter of the proposed testimony “is not fact evidence based on the personal knowledge or observation of the witness” and “[t]he credibility issue here, if anything, relates to the scientific reliability of literature that was not authored by the witness and does not purport to be based on scientific experiments or similar empirical research performed by or for the witness.”

The Board was “not persuaded that observation of [the expert’s] demeanor will be helpful in assessing the scientific reliability of published scientific research in which [the expert] did not participate” and determined that “it would not be helpful to the Board to receive live testimony from [the expert] that is entirely redundant to declaration and/or deposition testimony that is already of record.”  Accordingly, the Board denied Petitioner’s request to present live testimony.

Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00599
Paper 55: Decision Denying Petitioner’s Request to Present Live Testimony at Oral Argument
Dated: May 13, 2015
Before: William A. Capp, Trenton A. Ward, and David C. McKone
Written by: Capp