In a matter before the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office, an Administrative Patent Judge granted additional time for a deposition where the witness was alleged to have been evasive and uncooperative in responding to questions.

In PTAB cases, uncompelled direct testimony must be submitted in the form of an affidavit. All other testimony must be in the form of a deposition transcript.

Unless the parties stipulate otherwise, or the PTAB so orders, the normal time limits for depositions are:

• Seven hours for direct examination
• Four hours for cross-examination
• Two hours for redirect examination

Background

Finjan Holdings is a cybersecurity company that holds a portfolio of more than 40 patents. The company has earned about $145 million from monetizing two of its patents via patent infringement litigation, licensing, and settlements with companies including Microsoft.

In 2013, Finjan filed a patent infringement suit against FireEye, Inc. in federal court in the Northern District of California, claiming infringement of seven of its patents.

Three months after the complaint was filed, FireEye successfully sought reexamination of three of the Finjan patents at issue.

Finjan also sought inter partes review of two of FireEye’s own patents before the PTAB.

In the cases involving FireEye’s patents, FireEye took the deposition of Dr. Trent Jaeger, Finjan’s expert witness. Dr. Jaeger had previously submitted two declarations of about 350 pages each.

In the middle of the scheduled deposition, FireEye’s attorney requested an emergency conference call with the PTAB due to Dr. Jaeger’s alleged “non-responsive answers and excessive delays in responding to questions.” The attorney requested additional time to examine Dr. Jaeger.

Finjan’s counsel countered that Dr. Jaeger had provided responsive deposition testimony “despite deeply flawed, confusing, ambiguous and harassing questions asked by” FireEye’s counsel.

Finjan’s counsel also contended that Dr. Jaeger’s long pauses were during times that he was consulting his lengthy declarations.

The PTAB’s Order

The PTAB reviewed the deposition transcript and agreed to allow an additional seven hours for FireEye to depose Dr. Jaeger.

The Board found that this extension was appropriate due to the extra time needed for Dr. Jaeger to consult his declarations.

The Board also found that Finjan would not be prejudiced by FireEye’s alleged attempt to “regroup and reassess strategy.” Further, Finjan had offered FireEye additional deposition time during the original deposition and didn’t indicate at that time that it would be prejudiced as a result.

The Board also took the opportunity to chide the attorneys for “a general lack of courtesy and decorum from counsel for both parties.”

The case is Finjan, Inc. v. FireEye, Inc., IPR2014-00344. 

Takeaway

If a witness being deposed in a matter before the PTAB is uncooperative, or if the need for a witness to consult documentation makes the deposition drag on, the party taking the deposition can petition the PTAB for more deposition time.

Lauri is a Harvard Law School graduate and a member of the California Bar with more than 20 years of experience helping technology and entertainment companies with transactions, including IP licensing, and litigation.