A recent PTAB decision highlights the difficulty of persuading the Board to allow live testimony from an expert during post-grant proceedings. In IPR2017-00433, the PTAB denied patent owner Polaris Industries Inc.’s motion for the live testimony of an expert, even as it acknowledged that his credibility was at issue.
In light of petitioner Arctic Cat, Inc.’s assertion that the expert, Dr. Bower, had given inconsistent testimony, Polaris moved for admission of his live testimony at oral argument pursuant to 37 C.F.R. § 42.53(a). Polaris hoped that his live testimony would assist the Board in favorably assessing his credibility. But the Board reiterated that in post-grant proceedings, presentation of live testimony is the exception, not the rule, in light of the Board’s aim to reach a quick and inexpensive resolution. The Board held that Dr. Bower’s credibility, though relevant, could be adequately assessed in light of the paper evidence and counsel’s oral argument.
The Board’s reasoning involves two criteria that are instructive for understanding when live testimony may be available. First, the Board noted that case dispositive issues of witness credibility are more likely to warrant live testimony at oral arguments. However, ordinary questions of witness credibility, such as the one at issue here, are not case dispositive. Second, the Board is more likely to allow the live testimony of witnesses whose credibility is at issue based on their demeanor rather than based on testimony included in paper evidence. As the Board noted in distinguishing from a proceeding in which live testimony of a fact witness was allowed, the credibility of experts turns more often on their presented theories than their demeanor.
Neither patent owners nor petitioners should take for granted the ability to present the live testimony of their experts before the PTAB. If an expert’s credibility is a foreseeable issue, parties should look to address it in the paper record. Nevertheless, parties should be aware that the opportunity to present live testimony of witnesses may be available, especially when credibility is dispositive or based on the (likely non-expert) witness’s demeanor.