Takeaway: Counsel defending a deposition must limit his or her objections to concise, non-argumentative, and non-suggestive statements rather than engaging in speaking objections.

In its Order, the Board determined that counsel for Patent Owner was making improper objections during the deposition of Patent Owner’s expert. Petitioner argued that Patent Owner’s objections were “speaking objections” as set forth in the Office Patent Trial Practice Guide, which prohibits such objections and requires any objections to be “stated concisely in a non-argumentative and non-suggestive manner.”  The Board asked the court reporter to read a portion of the transcript reflecting one example of Patent Owner’s objection.  The exemplary objection began with “Objection, misleading . . .,” but then explained at some length that the question was misleading because it asked for a conclusion from the witness based on only a portion of the patent that was “taken out of context” according to Patent Owner.  The Board agreed with Petitioner that this was improper and ordered Patent Owner’s counsel to cease such objections.  The Board stated that any further violations would warrant sanctions, including but not limited to, exclusion of the primary declaration testimony from the witness being deposed.

Medtronic, Inc., Medtronic Vascular, Inc., and Medtronic Corevalve, LLC v. Troy R. Norred, M.D., IPR2014-00110; IPR2014-00111
Paper 23: Order on Conduct of the Proceeding
Dated: October 8, 2014
Patent: 6,482,228 B1
Before: Sheridan K. Snedden, Barry L. Grossman, and Mitchell G. Weatherly
Written by: Weatherly