Question: What can you do when you suspect that opposing counsel engaged in inappropriate witness coaching during a PTAB deposition?  Answer: Ask the witness about the suspected off-the-record discussions and call the Board from the deposition, if necessary.

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00434, Paper 12 (Feb. 10, 2015), in a post-conference call order, the Board addressed a party’s claim that opposing counsel engaged in inappropriate deposition witness coaching during an expert’s deposition.

At the deposition, the witness divulged certain “unexpected” testimony during cross-examination.  Prior to redirect, petitioner’s counsel and the deponent had off-the-record discussions during a half-hour recess.  On redirect, the witness made an attempt to overcome, and possibly explain away, the unexpected testimony.  The patent owner suspected that improper witness coaching occurred during recess given the witness’s ability to address the “unexpected” testimony that arose during cross.  When patent owner’s counsel questioned the witness about the nature of the off-the-record conversations, the witness refused to answer under petitioner’s claim of privilege.

As we shall see, at this point in the deposition, the patent owner’s counsel should have called the Board for assistance.  The patent owner instead completed the deposition and raised the issue during a pair of conference calls with the Board a few days later.  Specifically, the patent owner requested additional discovery of the off-the-record discussions—and also moved for sanctions for the alleged inappropriate witness coaching.

The Board denied patent owner’s requests, and found that the patent owner waived its right to further discovery of the off-the-record conversation when it failed to seek assistance from the Board at the deposition.  The takeaway from this ruling is that the Board prefers parties resolve their disputes at the deposition—even if it means getting the Board involved—rather than draw out the dispute, which would likely lead to one or both parties requesting further discovery.  As the Board reflected: “Where would it end?”

In its order, the Board further acknowledged the fundamental problems with deposition recesses, and it provided some guidance for an aggrieved party’s course of conduct in this kind of this situation, which is summarized in the following practice tips:

Tip #1: Hold the redirect examination immediately following the cross-examination.

The Board stated:  “In general, there are problems associated with off-the-record discussions between counsel for a party and a witness testifying on behalf of a party taking place during any recess after conclusion of cross-examination and before any redirect.”  Obviously, the risk of witness coaching is one such problem.  But another problem is the inherent difficulty for an opponent to uncover the nature of any conversation during a recess.  These risks can be avoided, the Board suggested, by holding the redirect examination immediately following cross-examination:

“If redirect takes place immediately follow[ing] cross-examination, there is no recess and therefore there probably can be no inappropriate witness coaching.”

Tip #2: Call the Board if your opponent demands what you believe to be an inappropriate recess.

If the witness’s counsel demands a recess after cross-examination—despite your request to forego one and move immediately into redirect—then in that situation the Board recommended that a phone call be placed to the Board:

“If a recess is requested and a party believes a recess is not appropriate, a conference call may be placed to the Board for a determination of whether a recess should occur and, if a recess is authorized, the conditions under which the recess is to occur.”

Tip #3: Call the Board if the witness refuses to answer questions about what you believe to be an inappropriate recess.

If a recess was taken, and coaching is suspected, and if the witness refuses to answer questions about the off-the-record discussions, then also in that situation the Board suggested that it be called for assistance.  As the patent owner learned, the risk of not calling is possible waiver of further discovery of the off-the-record discussions:

“[A]ny possibility of developing further information or evidence relating to what occurred during Petitioner’s off-the-record recess conference with the deponent was waived when the Patent Owner did not seek the assistance of the Board when Petitioner declined to permit its witness to answer Patent Owner’s questions during the deposition.”

The Board previously emphasized the importance of placing a phone call seeking its assistance during a deposition dispute to avoid the consequence of additional depositions and other follow-up discovery.  In Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper 31 (Apr. 29, 2014), counsel instructed its witness not to answer deposition questions based on the ground of relevance—which does not fall within any of the exceptions permitted under the PTAB Guidelines.  See 77 Fed. Reg. at 48,772-73.  The Board, however, advised counsel to call the Board when faced with this kind of conduct at a deposition:

“If counsel believed that the examination . . . was being conducted in bad faith, or in a manner that unreasonably annoyed, embarrassed, or oppressed [the witness] or Patent Owner, counsel should have promptly initiated a conference call with the Board.”

The PTAB Guidelines also instruct a party to “promptly initiate a conference call with the Board to discuss the proposed motion” when there is perceived deposition misconduct.  See 77 Fed. Reg. at 48,772-73 ¶ 9.

Tip #4: File a motion to exclude, and argue as to the reduced weight of the witness’s testimony

The Board also explained that, to the extent a party believes that inappropriate witness coaching has occurred, it may be addressed by a motion to exclude all or a portion of the testimony and—should the motion be denied—through argument as to the weight, if any, to be given to the coached witness’s testimony.  Of course, the factual support necessary for such a motion and argument would likely be the responses given by the coached witness when asked about the nature of the off-the-record conversation.

Thus, as reluctant as one may be to place a phone call to the Board during a deposition, FLIR Systems teaches that such a phone call is the key to preserving your rights in certain circumstances, especially those involving suspected instances of inappropriate witness coaching.  Knowing when to make the call may mean the difference for preserving your right to additional discovery, which may lead to the necessary facts supporting a subsequent motion to exclude an improperly coached witness.