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The America Invents Act Brings Patent Litigation to the Patent and Trademark Office: Declarations and Depositions Will Now Be Common for the First Time

The America Invents Act (the “AIA”) includes a new inter partes review (“IPR”) procedure that takes the place of the old inter partes reexamination. The new IPR procedure, called a “trial” once the petition for review is granted by the Patent Office, permits declarations, limited discovery, including depositions, and potentially live testimony before the Patent Trial and Appeal Board at the hearing on the petition. This new litigation component is likely to drastically alter the strategy and potential outcomes from the old reexamination process.

Indeed, the litigation component of challenging the validity of a patent at the Patent Office is unlike anything in the old reexamination process. As a result of this shift from a patent prosecution-like proceeding to one incorporating adversarial elements of litigation, it will be important for companies contemplating filing IPRs to review the IPR process and the petitions themselves, including expert declarations, with a litigation mind set and with the help of seasoned litigators in combination with savvy patent prosecutors.

This is the first in a series of articles that focus on the new IPR process and the key provisions that bring litigation to the PTO.

The first aspect on which to focus is that declarations are now permitted–and likely will be commonplace–in filing IPRs and opposing IPRs. Given the nature of challenges to patents using prior art, including the motivations to combine based on the concept of a person of ordinary skill in the art, it is likely that these declarations will be filed by experts. There is also an automatic right to take a deposition of anyone submitting a declaration either in support of, or in opposition to, the IPR. Because it is likely that these will be expert declarations (which will essentially be expert reports), we can expect expert depositions, with the same Federal Rules of Evidence that are applicable in patent litigation in the United States District Courts.

For example, one of the relevant provision provides: “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 agreed to video-recorded testimony, but may not submit such testimony without prior authorization of the Board. In addition, the Board may authorize or require live or video-recorded testimony.” 37 C.F.R § 42.43(a) (2012).

Another provision provides for strict limitations on examination by deposition, meaning that the person taking the deposition and the person propounding the testimony must be well prepared and well versed in what really counts in the case as the time limits are strict: “Unless stipulated by the parties or ordered by the Board, cross-examination, redirect examination and re-cross examination for uncompelled direct deposition testimony shall be subject to the following time limits: Seven hours for cross-examination, four hours for redirect examination, and two hours for re-cross examination.” 37 C.F.R. § 42.43(c)(2) (2012).

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In sum, as a result of the significant changes to the way in which patents will be challenged before the Patent Office, we can expect significant expert work done in support of and in opposition to the IPRs, which will closely resemble patent litigation in the district courts. As noted above, litigation-oriented skills such as effective and efficient cross-examination of experts are now necessary due to the strict time limits for conducting depositions and the fact that the depositions may very well be the only testimony that is allowed for the arguments presented at the hearing. Accordingly, given the litigation that is fast arriving at the Patent Office, it will be critical to have experienced litigators on hand to help prepare the expert declarations and to examine the experts at depositions that may very well constitute the trial testimony for use at the hearing on the trial before the Patent Office.