DEVOTED TO INTELLECTUAL PROPERTY LITIGATION ......excerpts totaling no more than 30 minutes for each wit-ness. 13 The video excerpts should be synchronized with the transcript of the

DEVOTED TO INTELLECTUAL

PROPERTYLITIGATION &

ENFORCEMENTEdited by Gregory J. Battersby

and Charles W. Grimes

Litigator

MAY/JUNE 2014

VOLUME 20 NUMBER 3

MAY/JUNE 2014 I P L i t i g a t o r 1

A Guide to Using Video-Recorded Depositions in Inter Partes Review Trials Stan Schlitter

Stan Schlitter is a partner in the Intellectual Property group of Steptoe & Johnson LLP. He

focuses his practice on patent infringement litigation, the licensing of intellectual property and intellectual property counseling. He is a member of the trial bar of the US District Court for the Northern District

of Illinois and has been admitted pro hac vice in numerous other district courts. Mr. Schlitter’s

experience includes matters involving semiconductor devices, electronics, mechanical devices, and business methods, among other technical areas. He is admitted

to practice before the US Patent and Trademark Office and has been counsel in several inter partes

review trials under the America Invents Act.

Video recorded depositions can be used in inter par-tes review (IPR) trials ( i.e. , the phase of the proceed-ing subsequent to a petition for IPR being granted) before the Patent Trial and Appeal Board (PTAB) under the America Invents Act. IPR trials are by their nature  streamlined. To meet the one-year deadline for the PTAB to issue a final written decision, 1 the PTAB exerts tight control over the trials and the issues that may be addressed. Thus, decisions granting petitions for IPR specify which of the grounds for invalidity asserted in the petition will be addressed in the “trial.” 2 Page limitations on briefs and motions, 3 the limitations on demonstrative exhibits that may be used at final oral hearing, and the limited time allocated for final oral hearings demand that petitioners and patent owners make the most of the opportunities available to them in IPR trials to make their case to the PTAB.

Typically, both the petitioner and the patent owner rely on expert declarations to support their respective positions in IPR trials, and depositions are taken of those experts. Cross-examination of declaration testi-mony by deposition is considered routine discovery for which the PTAB’s authorization or the adverse party’s consent is unnecessary. 4 Provided the PTAB authorizes their submission in a particular case, video clips from depositions can be used to support arguments in briefs and later as demonstrative exhibits at the final oral hearing.

As discussed below, the rules governing IPR trials contemplate video-recorded depositions and impose requirements for taking and submitting them in support of a brief or using them as demonstrative exhibits at final oral hearing. This article provides guidance for taking, submitting, and using video-recorded depositions in IPR trials.

Reasons to Video-Record a Deposition

As in any litigation, a video-recorded deposition in an IPR trial has several advantages over a printed transcript alone. Video-recorded testimony can better capture interest, convey more information, and make a clearer and stronger impression than printed testimony alone. Importantly, a witness’ demeanor can be observed in a video clip, shedding light on his or her credibility. For example, long pauses before answering questions are unnoticeable from a printed transcript, but stand out starkly on a video. Long pauses may give the appearance that the witness is hiding something or being evasive. Similarly, a witness’ look of surprise may indicate a lack of knowledge; a nervous voice, a change in tone of voice, or a facial expression might betray a witness’ lack of confidence in an answer or a lack of candor. Thus, a video may reveal a great deal more information about the witness’ demeanor and credibility than the printed transcript alone.

From the perspective of a party taking a deposition, when a witness’ deposition is being video recorded, tactics such as a witness’ long pauses and evasiveness that hinder the efficient conduct of the deposition are discouraged because they will be evident to anyone watching the video-recording of the deposition later. Similarly, video recording a deposition may serve to restrain obstructionist conduct of some opposing coun-sel in defending the deposition and may tend to make it proceed more smoothly.

By capturing the viewer’s attention, a video clip of a deposition transcript also may be useful to emphasize an admission or other key testimony. Additionally, some testimony might be more easily understood by view-ing the witness testifying than by reading the printed

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transcript. For example, when a witness points to some portion of or marks on a deposition exhibit, having the witness hold up the exhibit for the video camera and point to a portion being referred to can aid in under-standing the testimony.

Rules for Video Recording Depositions in IPR Trials

The rules governing IPR trials specifically provide for video recording depositions. Under 37 C.F.R. § 42.53(a), “[p]arties may agree to video-recorded [deposition] testi-mony, but may not submit such testimony without prior authorization of the Board.” 5 Thus, when the parties agree to video-record a deposition, it is unnecessary to seek the PTAB’s authorization to do so. However, video-recorded testimony may not be submitted to the PTAB without the PTAB’s prior authorization. To obtain the PTAB’s authorization to submit video-recorded deposi-tion testimony, a party generally must demonstrate a specific reason or need for viewing by the PTAB. 6

In Corning Inc. v. DSM IP Assets B.V. , the PTAB allowed 30 minutes of excerpts from the video deposi-tion of each of two witnesses to be submitted. 7 The PTAB apparently found sufficient need for submission of 30-minute video clips of excerpts just because the depositions had extended over five days and four days, respectively.

The timing of making a request to the PTAB for authorization to submit video-recorded deposition tes-timony is somewhat critical. In general, authorization should not be sought until after the deposition has been completed so that the specific reasons or need for the PTAB to view video excerpts can be articulated to the PTAB with reference to the video-recorded and printed transcript. The PTAB held in one case that a request to submit video-recorded testimony was premature where the deposition had not yet been taken and no specific reason or need was shown. 8 The PTAB has suggested that prior authorization to submit video-recorded testi-mony could be sought by a patent owner at the time of filing the patent owner response or reply to petitioner’s opposition to a motion to amend. 9 A petitioner could seek authorization to submit video-recorded testi-mony at the time of filing its opposition to a motion to amend. Possibly a request to submit video excerpts also could be made in connection with a motion for observation on cross-examination to draw the PTAB’s attention to relevant cross-e xamination testimony of a reply witness.

As discussed below in regard to final oral hearing, video excerpts that were not submitted and made a part of the record during the briefing phase of the IPR trial

will be considered new evidence, which may not be used at final oral hearing. 10 Therefore, the decision to poten-tially use a video clip at final oral hearing must be made early enough to make the clip part of the record during the briefing phase of the IPR trial.

Some Mechanics of Submitting Video Exhibits to the PTAB

Video exhibits must be submitted in proper MPEG format. 11 Only PDF and MPEG format files may be uploaded in PRPS. 12 Noting that no video exhibit may exceed 25 MB, the PTAB in Corning Inc. v. DSM IP Assets B.V. authorized the filing of video excerpts as multiple exhibits (each not exceeding 25 MB), with the excerpts totaling no more than 30 minutes for each wit-ness. 13 The video excerpts should be synchronized with the transcript of the testimony so that the synchronized text appears along with the video content, as the PTAB requested in Corning Inc . Showing the text next to the video clip can heighten the impact of the testimony and make it easier to follow and cross-reference to the brief in which it is cited.

Video-Recorded Depositions as Exhibits to Briefs

Video clips of excerpts from video recorded depositions can be used to support arguments in a brief, provided the PTAB’s authorization to submit the video clips is obtained. Given the streamlined nature of IPR trials, the page limitations on briefs, and the inability to introduce new evidence or present new arguments at the final oral hearing, consideration should be given to using video excerpts of depositions during the briefing phase of an IPR trial. Video clips can provide persuasive support for arguments in a brief, and in appropriate cases they also can be used as a demonstrative exhibit at final oral hearing.

In seeking the PTAB’s authorization to submit video excerpts from a deposition, a party should point out the additional information conveyed by the video excerpts that is not apparent from the printed transcript. A typi-cal reason for submitting video excerpts is to allow the PTAB to evaluate the witness’ demeanor in assessing credibility. Another reason might be to enable the PTAB to clearly understand testimony involving the witness marking on or pointing to something in an exhibit dur-ing his or her deposition.

As noted above, the PTAB indicated in Corning Inc. v. DSM IP Assets B.V. that a sufficient need for the

MAY/JUNE 2014 I P L i t i g a t o r 3

submission of excerpts might be that the deposition extended over several days. 14 But because excerpts of the printed transcript of a lengthy deposition could be submitted, the duration of a deposition may not by itself suffice in every case to gain the PTAB’s authorization to submit video excerpts.

When a video clip of deposition excerpts is submit-ted in support of a brief, the video excerpts should be discussed in the brief and their significance explained. Besides maximizing the impact of the video excerpts on the argument a party is making in the brief, this can help ensure that the video clip will not be new evidence if later the party desires to use it as a demonstrative exhibit at final oral hearing.

Video-Recorded Deposition Excerpts as Demonstratives at the Final Oral Hearing

No new evidence or arguments may be presented at final oral hearing. 15 At final oral hearing, the parties may rely only on evidence previously submitted in the pro-ceeding and present only arguments made in the papers previously submitted. Video clips of deposition excerpts not submitted prior to final oral hearing constitute new evidence. 16 Therefore, to be used at final oral hearing, video clips must have been previously made part of the record in connection with a paper that was filed. 17

The PTAB provided guidance regarding demonstrative exhibits at final oral hearing in CBS Interactive Inc. v. Helferich Patent Licensing, LLC . 18 Further guidance also is provided in the Office Patent Trial Practice Guide. 19 This guidance will be discussed below.

A party may not at final oral hearing rely on evidence that was not submitted in the petition, patent owner response, a motion, an opposition, or a reply. 20 Accord-ing to the PTAB, “the final oral hearing is not an oppor-tunity to add anything to a party’s case.” 21 “Whatever a party desires to present … should have already been presented in the party’s petition, response, opposition, motion, reply, declarations, observations on cross-exami-nation, or other exhibits presented at an appropriate time at trial.” 22 As the PTAB has noted, unlike trials in district courts, a trial before the PTAB is conducted on paper. 23 The final oral hearing is an oral hearing at which the par-ties are limited to evidence and arguments they already submitted on paper, with an opportunity for the PTAB to ask questions. The parties may use demonstrative exhibits at the final oral hearing, subject to the foregoing limitations.

For evidence or an argument not to be considered new for purposes of final oral hearing, it must have previously been developed, discussed, or explained in

a party’s papers. 24 Testimony may not be developed, discussed, explained, or summarized, for the first time, in the form of a demonstrative exhibit at final oral hear-ing. 25 The PTAB does not even permit a party to bring a new twist or angle to a party’s case, including a different characterization of the evidence or different inferences to be drawn from the evidence. 26 The PTAB stated in Microstrategy, Inc. v. Zillow, Inc. that “either party may, at final oral hearing, use any page from the record as a demonstrative exhibit, so long as the content of the page has been specifically discussed in an appropriate paper in the proceeding.” 27 Note that merely including a page in the record in the proceeding is insufficient for the PTAB to permit that page to be used as a demonstrative exhibit at final oral hearing; the page must have been discussed specifically in an appropriate paper. The PTAB is likely to apply the same rationale to video clips from deposi-tions.

Generally, establishing the requisite specific need or reason for the PTAB to view video excerpts from a depo-sition will require focusing on particular excerpts rather than the entire deposition. Submitting lengthy video clips of deposition excerpts to the PTAB with a paper during the trial without discussing the significance of all of the excerpts in the video clips in the paper in support of which they are being submitted probably would not be sufficient to enable a party to use the video clips at final oral hearing. Therefore, any video-recorded deposi-tion excerpts a party may want to use as a demonstra-tive exhibit at final oral hearing should be specifically developed, discussed, explained, or summarized in a paper submitted during the trial. 28 Also, given the time constraints of final oral hearings (many have been lim-ited to an hour for the petitioner and patent owner each), showing more than a short video clip generally would be impractical. Video clips shown at final oral hearing should be short clips that are likely to have a significant impact, such as by detracting from an adverse expert’s credibility or strongly emphasizing an important point.

To minimize the chance of video excerpts being deemed new evidence or argument, precisely the video excerpts potentially to be used at the final oral hearing should be used as an exhibit to an appropriate paper and the argu-ments and inferences to be drawn from those excerpts developed in that paper. The burden of showing that a demonstrative exhibit is not new evidence and does not present a new argument is on the party presenting it. 29 It is possible that the PTAB might consider a short video clip taken from a longer video clip submitted in support of a brief to be new evidence if the specific portion of the longer video clip included in the short video clip was not specifically discussed in the brief.

While as a practical matter only a short video clip could be used at the final oral hearing, more liberal

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use of video clips would be possible as exhibits to the papers submitted in the course of the trial. For example, as noted above, in Corning Inc. v. DSM IP Assets B.V. the PTAB permitted submission of 30 minutes of video excerpts from each of two witness depositions. In gen-eral, there likely will be many fewer opportunities to use video clips as demonstratives at oral hearings than as exhibits to briefs.

Because evidence at final oral hearing must have been presented and explained in a paper in order to be used at the oral hearing, the PTAB already will have seen the video clip to be shown as a demonstrative exhibit prior to the oral hearing. Nevertheless, viewing it again will reinforce the point being made by the video clip. It also may invite the PTAB to ask questions about it, adding further emphasis to the video clip.

Not every case will produce a video clip significant enough to merit being shown at final oral hearing. How-ever, attorneys should be attentive to opportunities to use a particularly significant video clip as a demonstrative at final oral hearing. When an appropriate video clip exists, it could capture the PTAB’s attention and make a significant impact.

Suggestions for Using Videotaped Depositions

The video excerpts to be used in support of a paper in an IPR trial should be selected to give a fair depiction of the deposition. Improper editing of video clips can give a misimpression by taking statements out of context or

giving undue significance to expressions, mannerisms or brief excerpts of the testimony. If your adversary uses video clips from a deposition, you should review them carefully to ensure that they fairly represent the witness and the testimony. You should expect an adversary to give the same scrutiny to your video clips.

Conclusion Given the streamlined nature of IPR trials and the

intent to provide a faster and less expensive forum to challenge the validity of patents under Sections 102 and 103, there are special constraints on the presentation of evidence and arguments in IPR trials. Consideration should be given to video recording the depositions of expert witnesses on their declarations. In some instances, video excerpts of a witness’ deposition testi-mony, together with the corresponding portions of the printed transcript, can be more easily understood and can convey more information relevant to credibility than the printed transcript alone. If a sufficient specific reason or need for the PTAB to view video excerpts can be shown to obtain the PTAB’s authorization, they may be submitted in support of briefs during the IPR trial. Provided that a video clip of deposition excerpts has been discussed specifically in an appropriate paper in the proceeding, a party may be able to use that video clip as a demonstrative exhibit at final oral hearing. Selective use of video clips in appropriate cases may help clarify and emphasize important expert witness testimony. This can provide for more persuasive and effective briefing and argument at final oral hearing.

1. Under 35 U.S.C. § 316(a)(11), an IPR is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

2. CBS Interactive Inc. v. Helferich Patent Licensing, LLC, No. IPR2013-00033, Paper 118 at 2-3 (P.T.A.B. Oct. 23, 2013).

3. See 37 C.F.R. § 42.24 (2013). 4. 37 C.F.R. § 42.51 (b)(1)(ii) (2013); see also CBS Interactive Inc. v. Helferich

Patent Licensing , LLC, No. IPR2013-00033, Paper 85 at 2-3 (P.T.A.B. Sept. 3, 2013), at 2-3.

5. 37 C.F.R. § 42.53 (2013) (“Taking testimony. (a) Form. Uncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 U.S.C. 24, must be in the form of a deposition transcript. Parties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board. In addi-tion, the Board may authorize.”) The foregoing is the only reference in the Code of Federal Regulations to video recording depositions. The Trial Practice Guide makes no express reference to video-recording depositions. See also, Nichia Corp. v. Emcore Corp ., No. IPR2012-00005, Paper 65 at 2-3 (P.T.A.B. Nov. 5, 2013); Atrium Med. Corp. v. Davol Inc., No. IPR2013-00188, Paper 29 at 2 (P.T.A.B. Sept. 30, 2013).

6. Atrium Med. Corp. at 2. 7. Corning Inc. v. DSMIP Assets B.V. , No. IPR2013-00043, Paper 41 at 2

(P.T.A.B. Aug. 23, 2013). 8. Atrium Med. Corp. at 2. 9. Nichia Corp. at 2-3 10. CBS Interactive Inc. , No. IPR2013-00033, Paper 118 at 2-3 (P.T.A.B. Oct. 23, 2013). 11. See USPTO , Patent Review Processing System (PRPS), Technical Issues,

Item 1, http://www.uspto.gov/ip/boards/bpai/prps.jsp .

12. Corning Inc . at 2; see also McLinton Energy Grp., LLC v. Magnum Oil Tools Int’l Ltd, No. IPR2013-00231, Paper 7 (Apr. 11, 2013) (rejecting petitioner’s submission of a DVD disk as a non-compliant format and directing resubmis-sion as an MPEG file).

13. Corning Inc. at 2. A seven hour deposition takes up about 4 GB; 25 MB cor-responds to roughly one to two pages.

14. Corning Inc. at 2. 15. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14,

2012); CBS Interactive Inc. , No. IPR2013-00033, Paper 118 at 2; Nichia Corp. v. Emcore Corp., No. IPR2012-00005, Paper 42 at 1-2 (P.T.A.B. Sept. 26, 2013).

16. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 47868. 17. Nichia Corp. v. Emcore Corp., No. IPR2012-00005, Paper 65 at 2-3 (P.T.A.B.

Nov. 5, 2013). 18. CBS Interactive Inc. , No. IPR2013-00033, Paper 118 at 2-5. 19. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48766–67. 20. Nichia Corp. v. Emcore Corp., No. IPR2012-00005, Paper 62 at 2 (P.T.A.B. Oct. 28,

2013). Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 at § II.M. (“No new evidence or arguments may be presented at the oral argument.”)

21. CBS Interactive Inc. , No. IPR2013-00033, Paper 118 at 2-3. 22. Id. at 3. 23. Id. at 2. 24. Id. 25. Id. 26. Id. at 3. 27. Microstrategy, Inc. v. Zillow, Inc., No. IPR2013-00034, Paper 40 at 2 (P.T.A.B.

Nov. 21, 2013). 28. See id. at 4. 29. Id.

Copyright © 2014 CCH Incorporated. All Rights Reserved.Reprinted from IP Litigator, May/June 2014, Volume 20, Number 3, pages 16–19,

with permission from Aspen Publishers, Wolters Kluwer Law & Business, New York, NY, 1-800-638-8437, www.aspenpublishers.com

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