Extending Depositions in IPRs

In the vast majority of depositions taken pursuant to an inter partes review, the deponent will have previously provided direct testimony via a declaration. The typical IPR deposition is therefore an opportunity for an opposing party to cross examine the witness, and the PTAB has set the standard duration of cross examination at seven hours. 37 C.F.R. 42.53(c)(2) (further providing four hours for re-direct examination and two hours for re-cross examination).

The seven-hour cross examination rule does contemplate extending the duration of a deposition, as may be “stipulated by the parties or ordered by the Board.” Id. Where each party retains an expert fact witness in an IPR, it can be mutually beneficial for the parties to stipulate to extended depositions. In one extreme case, the parties agreed to stipulated extensions such that the deposition of a single witness extended over a five-day period.

The PTAB Trial Practice Guide provides additional guidance for the appropriateness of a Board-ordered extended deposition: “The Board may allow additional time if needed to examine the witness fairly or if the witness, another person, or any other circumstance impedes or delays the examination.” 77 Fed. Reg. 48756, 48772. However, a recent search of available Board written orders failed to locate even a single instance of the Board exercising this power to extend the duration of a deposition.

Available orders from the PTAB which touch on the subject of deposition duration actually tend to move in the opposite direction: toward less deposition time rather than more. In cases where parties are involved in multiple related IPRs, the Board occasionally issues an order to reduce the total deposition time allotted for any one witness. See, e.g., Petroleum Geo-Services Inc. v. WesternGeco LLC, IPR2014-00687, Paper 37, 3 (P.T.A.B. Jan. 21, 2015) (“Although 37 C.F.R. 42.53(c) provides seven hours for cross-examination [] in each proceeding, [] a reasonable time period for each expert deposition is [] 12 hours for cross-examination”). Similarly, the Board often addresses the issue in orders granting joinder of multiple IPRs by requiring that the parties adhere to the seven-hour limit despite the complexity of the case involving many petitioners. See, e.g., The Gillette Co. v. Zond, LLC, IPR2014-01004, Paper 15, 6 (P.T.A.B. Jan. 6, 2014) (“Petitioners collectively will designate attorneys to conduct the cross-examination of any witnesses produced by [Patent Owner] within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party”).

Absent a stipulation for extending deposition timeframes, a party can either (1) move that the Board order extended depositions or (2) conform to the seven-hour standard.

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The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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