Patent interferences have been part of patent practice since the 1800's. For a long time, direct testimony was by deposition. See, e.g., 37 CFR 13 § 1.272(a) (1984); Rivise & Caesar, Interference Law and Practice, Vol. 3, 14 § 408 (1947) (Patent Office rules provide that the testimony of witnesses in this country may be taken by deposition); Rivise, Interference Practice, § 128 (1932) (testimony is taken in the form of deposition). Cross examination occurred at the deposition. Affidavit testimony could be used 18 only by agreement of the parties. 37 CFR § 1.272(c) (1984). 19

In 1984, the rules were amended to permit the party presenting testimony to elect to present direct testimony by deposition or affidavit. 37 CFR § 1.672(b) (1985). If direct testimony was presented in affidavit form, cross examination was authorized. Id.

In 1995, the rules were again amended and for the first time required that direct testimony be presented by affidavit. 37 CFR § 1.672(a). The only exception was testimony which is compelled by subpoena under 35 U.S.C. § 24. Cross-examination of testimony presented in affidavit form was authorized. 37 CFR § 1.672(d) (1995). The practice adopted in 1995 was recodified in 2004 as 37 CFR 2 § 41.157(a) (2005). See 69 Fed. Reg. 49960, 50017 (Aug. 12, 2004).

Direct testimony in a patent interference is submitted as affidavits and transcripts. Cross examination in an interference is like a deposition: a witness, with counsels for both parties present, a copy of the affidavit comprising the witnesses' direct testimony, and a stenography for recording the blow-by-blow. It resembles a litigation discovery deposition, but it's not. The PBAI wants it handled like cross-examination during trial. That's because the discovery has already occurred.

Before the opponent determines whether cross examination would be appropriate, the opponent has before it all of the moving party's evidence. An opponent has complete "discovery" of the case-in-chief of the moving party, a luxury an opponent ordinarily would not enjoy in a trial in a court. Additionally, the opponent chooses the order in which witnesses are cross examined. 37 CFR § 41.157(c)(2) (2006). Since the opponent has the entire case-in-chief on any given motion before cross examination begins, numerous objections have been avoided compared to when testimony was presented in piece-meal deposition fashion.

Cross-examination during a deposition is the "trial" in an interference. After the deposition, there is no subsequent trial where a witness is further cross examined "live" as might occur in a Federal court. An objection is either made during the deposition or it is waived—period.

A 1993 opinion by the late U.S. District Judge Robert S. Gawthrop, III of the U.S. District Court for the Eastern District of Pennsylvania, summarized the difficulties with depositions, and set guidelines. The BPAI essentially follows those guidelines.

During discovery depositions, objections based on the form of the question are chockablock. This can take the form of implicit coaching by counsel. This is not appropriate for interference depositions.

Fundamentally, however, it should be remembered that a deposition is an opportunity for an opposing counsel to have a conversation with the witness: "A deposition is meant to be a question-and-answer conversation between the deposing lawyer and the witness. There is no proper need for the witness's own lawyer to act as an intermediary, interpreting questions, deciding which questions the witness should answer and helping the witness to formulate answers." 150 F.R.D. at 528, col. 1.

Reproduced in footnote 1 of the Guidelines is an observation by Judge Gawthrop:

I also note that a favorite objection or interjection of lawyers is, "I don't understand the question, therefore the witness doesn't understand the question." This is not a proper objection. If the witness needs clarification, the witness may ask the deposing lawyer for clarification. A lawyer's purported lack of understanding is not a proper reason to interrupt a deposition. In addition, lawyers are not permitted to state on the record their interpretations of questions, since those interpretations are irrelevant and often suggestive of a particularly desired answer.

150 F.R.D. at 530 n.10. There can be no objection under the contested cases rules or the Federal Rules of Evidence that a question is ambiguous, not clear or vague.

[I]n patent interference practice before the Board, there is no such thing as an objection to the form of the question.

Another admonishment was against inquiring as to the circumstances by which an affidavit was prepared.

First, it does not matter how a declaration for direct testimony is prepared, who suggested what, what changes were made, how drafts and the final declaration were transmitted to a witness for signature, etc. If a witness signed a declaration, a good starting point is to presume that the witness agrees with the content of the declaration apart from who wrote it and how many changes were made or why they were made. We can advise the bar that (1) we assume that ordinarily an attorney prepares at least the first draft of a declaration after discussion with the witness, (2) the witness is probably paid for time involved in testifying, either because the witness is an outside expert or is employed by the real party in interest, (3) drafts, possibly numerous drafts, are created and revised through discussions between the witness and the attorneys and (4) ultimately a draft is agreed to which is signed. We have no problem whatsoever with the process.

Second, a tension exists between (1) an inquiry into details of how a direct testimony declaration came to be prepared, on the one hand, and (2) both the attorney work product doctrine and attorney-client privilege, on the other hand. An attorney needs to be able to freely talk with a client witness or a non-client witness to formulate a litigation strategy (or even to see if there is a case to present). After-the-fact cross examination inquiries into declaration preparation tend to chill an inquiry an attorney might initially make into what the facts are and who should testify concerning particular facts.

Third, what matters is what is said on the merits, e.g., (1) identification of credentials, (2) explanation of an invention, (3) explanation of prior art, (4) explanation why an invention would not be expected to "work," (5) an underlying basis for opinions stated by experts and (6) events related to conception, diligence and actual reduction to 11 practice. Cross examination to inquire into whether the witness has a basis for facts asserted and opinions stated in a declaration is fair game. Indeed, inquiry into facts and opinions should be the focus of cross examination. Obviously there will be cases where qualification of a witness and possible witness bias may need to be addressed and inquiry into these subjects is also fair game for cross examination. Cross examination which "sticks" to the relevant technical facts will shorten cross examination time and will probably be more effective in helping a party establish its position on a particular point.

In the future, absent a compelling reason, we counsel against any attempt to inquire on cross-examination into how direct testimony declarations came to be prepared.