K-40 Elecs., LLC v. Escort, Inc.

Trials@uspto.gov 	Paper 34
Tel: 571-272-7822 	Entered: May 21, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
K-40 ELECTRONICS, LLC
Petitioner
v.
ESCORT, INC.
Patent Owner
_______________
Case IPR2013-00203
Patent 7,999,721
______________
Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
TRENTON A. WARD, Administrative Patent Judges.
GIANNETTI, Administrative Patent Judge.
ORDER
Request for Live Testimony
37 C.F.R. § 42.70

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2
Patent Owner, Escort, Inc., has moved to present live testimony from its
named inventor, Steven K. “Steve” Orr, at the final oral argument in this case on
June 17, 2014. Paper 28 (“Motion”). Petitioner, K-40 Electronics, LLC, opposes.
Paper 29 (“Opposition”).1
The Board grants the motions, subject to the restrictions set forth below.
DISCUSSION
The Board does not envision that live testimony will be necessary at many
oral arguments. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug.
14, 2012). However, under very limited circumstances, cross-examination of
witnesses may be ordered to take place in the presence of an administrative patent
judge. Id. at 48762. For example, the Board may occasionally require live
testimony where the Board considers the demeanor of a witness critical to
assessing credibility. Id.
The Board has determined that this case presents such circumstances. In
addition to being named as sole inventor on the patent in this proceeding and a
related proceeding involving the same parties and technology, i.e., IPR2013-
00240, Mr. Orr is Petitioner’s principal fact witness. Through his declaration
testimony in both cases, Patent Owner attempts to antedate the only two references
(Hoffberg and Fleming III) relied on by Petitioner in its challenge to patentability.
Mr. Orr’s testimony is, therefore, key, and may well be case-dispositive. Further,
in that connection, declarations by Mr. Orr were presented to overcome the same
1 We do not accept Petitioner’s characterization of this motion as seeking
“additional discovery” subject to the Garmin interests-of-justice factors.
Opposition 2.

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3
references in other USPTO proceedings. There is, therefore, good cause to grant
the motion.
We have considered Petitioner’s arguments in opposition and find them
unavailing. For instance, Petitioner contends that granting the motion will
establish a “de facto” rule permitting live testimony in all antedating disputes. We
disagree. Opposition 1. The Board envisions that live testimony will be necessary
only in limited circumstances and intends to approach requests for live testimony
on a case-by-case basis.
Factors to be considered may include the importance of the witness’s
testimony to the case, i.e., whether it may be case-dispositive. Here, the outcome
of this proceeding may well turn on Mr. Orr’s testimony. Another factor favoring
live testimony is that Mr. Orr is a fact witness. In contrast, the credibility of
experts often turns less on demeanor and more on the plausibility of their theories.
See Andreu v. Sec’y of HHS, 569 F.3d 1367, 1379 (Fed. Cir. 2009) (“A trial court
makes a credibility determination in order to assess the candor of a fact witness,
not to evaluate whether an expert witness’ medical theory is supported by the
weight of epidemiological evidence.”). In short, the Board sees no possibility that
a “per se” rule will result from granting the motion, or that as a result, granting
requests for live testimony will become the norm rather than the exception.
Neither are we persuaded that granting the motion gives Patent Owner a
chance to “rewrite” testimony that Petitioner characterizes as an “unfavorable
record.” Opposition 3, 5. The Board has determined that only cross-examination
and redirect will be permitted, thus limiting the scope of examination. No changes
will be possible to Mr. Orr’s direct testimony, for that is fixed by his previously
submitted declaration. And should Petitioner suspect that Mr. Orr is changing his
testimony, he may be impeached with his prior testimony.

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Finally, we have noted Petitioner’s contention that Mr. Orr’s credibility is
not case-dispositive because his testimony is uncorroborated. Opposition 4-5.
Patent Owner, obviously, disputes this. PO Resp., Paper 12, 35. Petitioner in
effect asks us to decide this issue now, in its favor. Presumably, this will be
covered in Mr. Orr’s cross-examination and in oral argument. We prefer to
address the issue after hearing his live testimony and argument from the parties.
ORDER
In view of the foregoing, it is, therefore,
ORDERED that Patent Owner’s motion to present live testimony of Steve
Orr at the final hearing on June 17, 2014, is granted;
FURTHER ORDERED that such testimony will be limited to up to 30
minutes of cross-examination by Petitioner’s counsel, followed by up to 30
minutes of redirect by Patent Owner’s counsel;
FURTHER ORDERED that the scope of Mr. Orr’s cross-examination will
strictly be limited to his declaration testimony in this proceeding and the scope of
his redirect examination will strictly be limited to the scope of cross-examination;
FURTHER ORDERED that the hearing on June 17, 2014, will begin with
the presentation of live testimony from Mr. Orr followed by the oral argument.

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For PETITIONER:
Greg Gardella
Scott McKeown
OLBON S PIVAK
cpdocketgardella@oblon.com
cpdocketmckeown@oblon.com
For PATENT OWNER:
Thomas W. Humphrey
John Paul Davis
W OOD HERRON & E VANS , LLP
thumphrey@whe-law.com
jdavis@whe-law.com