The following article appears in the journal JOM, 45 (10) (1993), p. 63. JOM is a publication of The Minerals, Metals & Materials Society

Preparing for a Deposition in a Patent Case

Patent litigation in the United States is tried before a federal district court, with or without a jury. The discovery process is designed to permit each party to obtain the information necessary to pursue or respond to the charges set forth in the complaint. This exchange may involve answers to written questions called "interrogatories," production of requested documents, and oral answers by a sworn witness during the course of a deposition.

Discovery depositions may be taken from, among others, fact witnesses and expert witnesses engaged by a party to provide expert opinions regarding such subjects as patent law, technology, and damages. Depositions also provide a basis for challenge at a trial in the event that a deponent gives testimony that is inconsistent with his or her deposition. Further, in taking depositions, the opposing party generally tries to determine what positions will be taken at trial so that effective counterpositions may, in turn, be developed.

The person being deposed is sworn in by a court reporter, who records the testimony and provides a transcript. An attorney asks the deponent questions; another attorney will generally serve as counsel for the deponent. After the witness is interrogated, the deponent's attorney (and, perhaps, additional attorneys if multiple parties are involved) has the opportunity to ask additional questions. After this cross-examination, the first attorney can then ask additional questions. As outlined in the sidebar, certain general principles should be followed by all deponents, although individual attorneys may modify these standards to accommodate unique aspects of the case or individual preferences.

Apart from instances where a deposition may be taken to provide or preserve testimony (e.g., from an aged or infirm potential witness), depositions generally involve an effort by one party to discover additional information from the other party or third parties. With respect to fact witnesses, an attorney representing a party accused of patent infringement will generally wish to take the deposition of the inventors with a view toward determining whether there might be defenses to the action, such as a defense that the patent is invalid or not infringed. If, for example, the inventor did not, in fact, invent the subject matter but rather derived it from a third party, this could be a ground for invalidating the patent. Also, if there is a "statutory bar," which, in the United States, involves placing on sale, publishing, or placing into commercial use an invention more than one year before filing of a patent application; this could result in the patent being invalid. The inventor has an obligation to disclose to the U.S. Patent and Trademark Office prior art that may be relevant to a determination of patentability of the invention. Failure to disclose such prior art may be a basis for challenging the validity of the patent.

If the plaintiff is a corporation, it is likely that others within the company who have knowledge of the invention, the patent, or other relevant information may also be deposed. Third parties might also be deposed. In the United States, one may show that even though an invention was apparently in commercial use for more than a year before the U.S. patent application was filed, all or a portion of such use was "experimental." Such experimental use is not included in determining when the statutory one-year period for filing an application began. Information regarding such experimental use might well be in the hands of a third party who conducted tests on behalf of the inventor or the patent owner.

ON BEING DEPOSED

In general, the following guidelines should be followed when being deposed. You are under oath and must tell the truth. Make sure that you understand the question. If not, ask for clarification. If appropriate, clarify the response with qualification. For example, you might be asked "Have you ever studied organic chemistry." You may be uncertain as to whether the question refers to formal course study or self-study. It would be appropriate to either ask for clarification or state "Not in any college course.: Try to make your response brief. Answer "yes" or "no" if possible. Do not volunteer information. If asked if you have a middle name, an appropriate answer might be. "Yes," not "Yes. It's Robert." Do not speculate. If you do not know an answer or do not remember, state that you do not know or do not remember. Pause for several seconds after a question has been asked before responding in order to provide the attorney representing you with an opportunity to object if he or she deems the question improper. If asked to review a document or examine a physical exhibit, either take adequate time to do so thoroughly or indicate in your answer that you have made only a brief review.

Certain areas of inquiry are frequently either prohibited or limited.

Often the party taking the deposition seeks to obtain information that is deemed confidential by the other party. As litigation generally cannot be employed as a means for gaining unrestricted access to another's confidential information, these types of issues are generally resolved by a protective order, which may be agreed upon by the parties and approved or established by the court. Such orders generally call for the marking of documents as "confidential" and define how the information should be treated.

A deponent may refuse to answer a question based upon information being protected by attorney-client privilege. Similarly, to the extent that information is generated, either in the process of or preparation for litigation, it may be deemed a "work product" and possibly not discoverable by the party taking the deposition.

Unlike a fact witness, who testifies regarding specific facts relevant to the case, the expert witness is selected to provide opinions based on demonstrable expertise in a particular area. In a patent case, for example, each side may choose to have experts in patent law offer testimony regarding what is required to establish a violation of a patent as well as related issues such as standards of validity, standards of infringement, and measure of damages. Similarly, technical experts may be involved to discuss technology relevant to the patent issues. For example, a technical expert might be asked what sort of person would be skilled in the art claimed in the patent and whether a particular practice claimed in a patent would have been obvious to one skilled in the art at the time the invention was made.