Taking a Deposition in an IPR or PGR

Most testimony in a PTAB trial never happens live in front of the Board. Witnesses submit written declarations, and the opposing party tests them through deposition. The transcript then becomes part of the record the Board reads. A deposition can therefore be one of the most important events in an inter partes review (IPR) or post-grant review (PGR).

The rules are in 37 C.F.R. §§ 42.51 through 42.53, with additional guidance in the Testimony Guidelines that accompany the USPTO’s Trial Practice Guide.

Direct testimony by declaration

Under 37 C.F.R. § 42.53(a), uncompelled direct testimony must be submitted in the form of an affidavit or declaration. The petitioner usually files an expert declaration with the petition, and the patent owner may file declarations with its preliminary response or patent owner response. Reply declarations often accompany the petitioner’s reply.

This structure means a witness’s direct testimony is fixed before anyone questions them. Cross-examination then tests that written testimony.

Cross-examination as routine discovery

Cross-examination of the other side’s declarant is routine discovery under § 42.51(b)(1)(ii), so it requires no motion or showing. It ordinarily takes place by deposition, within the windows set by the scheduling order: generally after the declaration is served and before the opposing party’s next paper is due.

Time limits

Section 42.53(c)(2) sets default time limits for uncompelled deposition testimony, unless the parties stipulate otherwise or the Board orders otherwise:

Examination	Default limit
Cross-examination	7 hours
Redirect	4 hours
Recross	2 hours

A witness who submitted several declarations, for example in related proceedings, may raise questions about how time is allocated. Parties often agree on this in advance or seek guidance from the Board.

Notice and logistics

The party seeking the deposition gives notice of the deposition under the rule, identifying the time and place. Parties typically confer on dates, location, the court reporter, any videographer, and how exhibits will be handled. Remote depositions are common, but the parties should confirm the procedures they will follow.

The Testimony Guidelines

The Trial Practice Guide includes Testimony Guidelines that govern conduct at depositions. Key points include:

• Objections. Objections must be concise, stated in a non-argumentative and non-suggestive manner. Speaking objections that coach the witness are not permitted.
• No conferring on substance. Once cross-examination begins, counsel for the witness may not confer with the witness about the substance of the testimony until cross-examination is complete, apart from limited matters such as privilege.
• Instructions not to answer. These are generally limited to privilege, enforcing a limitation ordered by the Board, or presenting a motion to terminate or limit the examination.
• Scope. Cross-examination is generally limited to the scope of the direct testimony, though the questioning of an expert can be wide-ranging within that scope.

Because the Board relies on the written record, misconduct at a deposition can be addressed later, for example through a request for a call with the Board during the deposition, or in later briefing. Objections to deposition evidence must be made during the deposition to be preserved. See evidentiary considerations in PTAB trials.

Filing the transcript

Deposition transcripts are filed as exhibits so the Board can consider them. A party relying on deposition testimony cites the specific pages and lines. The transcript of a reply witness’s cross-examination is the one type of new evidence that a patent owner’s sur-reply may generally include.

Foreign witnesses and interpreters

Depositions of witnesses located outside the United States, or witnesses who need an interpreter, take advance planning. Considerations include:

• Location and local law. Some countries restrict depositions taken for foreign proceedings. Depositions outside the United States may require the parties’ agreement or a Board order.
• Interpreters. Parties often agree on the interpreter, any check interpreter, and how disputes about translation will be handled.
• Time. Interpreted testimony takes longer, which can matter under the default time limits; parties may stipulate to adjust them.
• Schedule. Travel, visas and time zones must fit within the compressed trial schedule. See discovery and the one-year time period.

Compelled testimony

Testimony from a witness who will not appear voluntarily, such as a third-party author of a prior-art reference, is compelled testimony. A party must seek authorization from the Board under § 42.52 before taking it. If authorized, a subpoena may be obtained under 35 U.S.C. § 24 through a federal district court. Because compelled testimony is a form of additional discovery, the request must meet the applicable standard. See discovery in PGR vs IPR.

Key takeaways

• Uncompelled direct testimony is by declaration (§ 42.53(a)); cross-examination by deposition is routine discovery.
• Default limits are seven hours of cross-examination, four of redirect and two of recross (§ 42.53(c)(2)) unless stipulated or ordered otherwise.
• The Testimony Guidelines require concise, non-argumentative objections and bar conferring with the witness about substance during cross-examination.
• Foreign witnesses and interpreters require early planning; compelled testimony requires Board authorization under § 42.52.