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Lawyers who take testimony in patent interferences may need to dramatically alter their ways. The Board of Patent Appeals and Interferences has made it clear that the judges are fed up and they’re not going to take it anymore. In a Jan. 12 opinion in Pevarello v. Lan, the board counseled firmly against endless objections, discussions, and all else that delays getting to the merits. For those civil litigators not familiar with the patent interference procedure, a little background may help: An interference proceeding is conducted when pending patent application A claims the same invention as pending application B or as patent B that was issued within one year of application A’s filing date. The contest is heard by a three-judge panel of the Board of Patent Appeals and Interferences. Although live testimony is not forbidden, the administrative law panel typically decides cases on the basis of a written record. Testimony is presented in the form of written affidavits or declarations from fact and expert witnesses. The other party is then provided with an opportunity to cross-examine each witness in a deposition-like setting. These cross-examination proceedings would feel very familiar to civil litigators. They are typically held in a conference room where the witness, counsel for both parties, and a court reporter are present. The witness is sworn and answers questions under oath. But proceedings are governed by the Code of Federal Regulations and the board’s own standing order; the Federal Rules of Civil Procedure do not apply. PREVIOUS WARNING Several years ago, the board added a section to its standing order relating to objections in depositions. Citing to a 1993 decision by the late U.S. District Judge Robert Gawthrop III of the Eastern District of Pennsylvania, the board bemoaned the fact that, in defending depositions, many lawyers repeatedly interrupt the question-and-answer process with objections, many of which appear calculated to coach answers from the witness. The board particularly pointed to objections to questions as “indefinite” or “confusing” as being calculated to cue a desired answer. As the board reiterated in Pevarello, “Often by the time one sifted through the objections and associated discussion one lost track of what question was asked.” In any event, lawyers who practice before the board were forced to modify their normal practice in depositions to avoid the board’s wrath. However, the new guidelines were not seen by the bar as particularly explicit, resulting in a wide variety of “work-around” strategies. Some lawyers, in an effort to avoid being seen as coaching a witness to deliver a particular answer, simply objected to their opponent’s question without stating any basis for the objection. Some refrained from objecting all together. At least one lawyer adopted the novel approach of first excusing the witness from the room every time the lawyer wanted to make an objection in order to avoid any suggestion that the objection would serve to cue the witness. Needless to say, that had a further tendency to slow down the process. The board’s decision in Pevarello now clears up the fog that had been cast by the board’s prior attempt to rein in objections. OBJECTION, IMPROPER OBJECTION In the actual interference contest, Paolo Pevarello (and his fellow inventors) emerged victorious. The board found that the patent application filed by Nancy Lan (and her fellow inventors) lacked an enabling disclosure, which meant it lacked a constructive reduction to practice, and, therefore, they were unable to contest priority of invention. But the board did address Lan’s suggestion that “the Patent Bar needs clarification as to whether [certain action] falls inside or outside . . . the Guidelines.” Pevarello makes it very clear that an interference deposition is not the same as a discovery deposition but more in the nature of trial testimony. Accordingly, lawyers are advised to raise objections as they would at trial. In other words, they must state the legal basis for their objections when they object. The blanket objection, to be filled in later if necessary, is not acceptable practice. Indeed, the board warned, “Motions to exclude based on blanket objections will not be considered.” Equally important, the board expressly prohibited lawyers from objecting to the form of a question. This will come as a shock to those accustomed to discovery depositions in civil litigation, where such objections are common parlance. But no, the board said, there is “no such thing” as an objection to the form of the question in interference practice. Instead, the board said that the witness himself should ask for clarification of a question, if necessary. “As hard as it may be for defending counsel to believe it,” the board wrote, “sometimes when counsel is confused the witness is not.” Likewise, the witness himself may point out if opposing counsel misstates his earlier testimony — or defending counsel can clean that up on redirect. Pevarello also dramatically changes the scope of depositions with respect to expert testimony. It has long been permissible under the Federal Rules of Evidence, which govern the taking of testimony in patent interferences as well as in litigation, to inquire into the preparation of the expert witness’s report and direct testimony. (Where an expert witness testifies, the Federal Rules do not protect communication between the witness and counsel.) Opposing attorneys are looking for evidence that, say, the report underwent significant changes from first draft to final version. This can give insight into the evolution of the other side’s thinking. No dice, the board said in Pevarello. It is not interested in any questions that the lawyer would care to ask regarding the preparation of an expert’s report or direct testimony. The board acknowledged that lawyers play a role in preparing testimony, that witnesses are often paid, and that numerous drafts may have been prepared and revised: “We have no problem whatsoever with the process.” Instead, lawyers are strongly counseled to focus on the merits of the final testimony. The Pevarello decision comes from an expanded panel of six judges, including Chief Judge Michael Fleming and Senior Judge Fred McKelvey. It will also apparently be designated “advisory” — the classification the board uses to signal that a decision, while not precedential, is still binding on the board and on lawyers who practice before it. Pevarello provides much-needed clarity that will, eventually, result in cleaner evidentiary records. It may make for less contentious depositions. But witnesses will need to be better prepared, and lawyers will have to watch their tongues. As the board said, “The contest is Pevarello v. Lan, not Counsel for Pevarello v. Counsel for Lan.”
Malcolm K. McGowan is a partner in the D.C. office of Bingham McCutchen, where he focuses primarily on patent interferences and patent litigation. McGowan is also experienced in patent prosecution.

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