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A recent opinion by the U.S. Patent and Trademark Office Board of Patent Appeals will change patent lawyers’ actions in so-called “interference cases,” or disputes about who invented something first, and potentially affect the outcome of cases, lawyers say. The memorandum and opinion in a patent interference case is a “strong admonition” for lawyers to avoid objections to the form or phrasing of questions, and not to question witnesses about how their affidavit testimony was prepared, said David Dykeman, an intellectual property shareholder in Greenberg Traurig’s Boston office. Paolo Pevarello v. Nancy C. Lan, Patent Interference No. 105,394 (USPTO Bd. of Patent App. & Inferences). “That’s a pretty strong admonition that is going to limit that line of questioning unless you have a compelling reason,” Dykeman said. Although the board sometimes hears live testimony, it typically reviews a transcript based on a depositionlike meeting between the two opposing parties. The board also reviews affidavits of expert witnesses, which the two sides discuss at their meeting. In its opinion, the board said objections should be based on legal reasons, such as leading or hearsay, and not about “the form of the question.” The board also said the witness-not his or her attorney-should ask for clarifications of questions, and that attorneys should not explain the witnesses’ testimony. “We cannot efficiently administer a case management process whereby our rules and established procedures, such as the [cross examination] Guidelines, are jettisoned to serve some interest of a lawyer,” stated the opinion. Patent lawyers involved in interference cases routinely ask expert witnesses how their report was prepared, said Malcolm McGowan, a Washington-based partner in Bingham McCutchen’s intellectual property litigation and patent prosecution group. Such questioning uncovers instances where extensive changes were made to the report and can help lawyers make their case, McGowan said. “It shows how their thinking has evolved and can give you insight into the other side’s strategic thinking,” McGowan said. The ruling both clarifies guidelines dating back to 1999 and underscores their importance to the board, said Herb Mintz, the patent interference section leader at Washington based Finnegan, Henderson, Farabow, Garrett & Dunner. Mintz is concerned about the warning against nonsubstantive objections because it will force lawyers to “superprepare” witnesses. The onus will be on witnesses to pick up on objectionable aspects of questions posed by the other side’s lawyers, Mintz said. Also, witnesses will now need to feel comfortable telling the other side’s lawyers they don’t understand a question, said Donna Meuth, a counsel and intellectual property attorney in the Boston office of Wilmer Cutler Pickering Hale and Dorr. “You won’t be allowed to do it for them,” Meuth said. Lawyers worry that self-censoring their objections could alter the outcome of a case. “If a particular piece of evidence gets in, even though it shouldn’t have, it always has the potential to turn a case,” McGowan said. An overly cautious approach to objections can also be harmful because an objection must be on record in order for an attorney to file a motion to exclude certain evidence, Mintz said. Mintz also noted that problematic questions could cause a witness to give erroneous or confusing answers. “If the record is unclear, it could be a disadvantage,” Mintz said. Despite the patent board’s bright-line opinion, Dykeman believes that lawyers will continue to err on the side of makings objections to the form of questions until an individual attorney is reprimanded. “Lawyers are trained to object,” Dykeman said. “It’s going to be hard to get them to stop until there’s a case where someone is made an example of and there’s a negative impact on that attorney’s case.”

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