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ARTICLE · 25 JULY 2019

Precedential PTAB Order Addresses Witness Examination

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The order further states that the prohibition does not exist, however, during the time frame between conclusion of cross examination and start of re-cross.

United StatesIntellectual Property

The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This clarification was in response to a request from the patent owner with regard to the PTAB Testimony Guidelines which state, in part:

Once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not: (a) consult or confer with the witness regarding the substance of the witness' testimony already given, or anticipated to be given, except for the purpose of conferring on whether to assert a privilege against testifying or on how to comply with a Board order; or (b) suggest to the witness the manner in which any questions should be answered.

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