Is the Canard that the Board Never Makes Credibility Determinations Finally Dead?

March 21, 2019 – Article

          In Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 53 USPQ2d 1580 (Fed. Cir. 2000)(“Winner v. Wang”), a panel of the Federal Circuit asserted that the administrative patent judges (“APJs”) can never hear and see witnesses under examination and cross-examination and that, accordingly, they cannot make credibility assessments. As I pointed out in Gholz, The Board Does Hear Live Testimony and Make Credibility Determinations!, 18 Intellectual Property Today No. 12 at page 12 (2011), “neither party [in Winner v. Wang] asserted that the APJs never hear live testimony or make ‘live credibility assessments.’ The court came up with those assertions entirely on its own.” Id. at page 13 n. 16; emphasis deleted. Moreover, the panel’s assertions were factually incorrect as of the day that it made them and, as also pointed out in that article, continued to be contrary to the APJs’ subsequent practice. Nevertheless, other panels of the Federal Circuit mindlessly repeated what I characterized as Winner v. Wang’s “canard”.

            In my 2011 article in Intellectual Property Today, I wrote optimistically that “It is … possible that things will be changing in the near future.” Id. at page 13. I wrote then that, with the advent of AIA proceedings and the expansion of the number of APJs to include more “attorneys from private practice who have experience with the examination and cross-examination of live witnesses in proceedings before courts and other administrative agencies[, i]t is devoutly to be hoped that … the APJs will begin to hear live testimony (and to make explicit credibility determinations) much more frequently than they have in the past.” Id. at 13.

            Well, it’s been eight years, which is a lot longer than I hoped in 2011, but things seem to be moving in the direction I hoped that they would back then. In 2014, a panel of the PTAB consisting of APJs Perry, Giannetti, and Ward issued an order in K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (Paper 34), authorizing live testimony at a hearing in an IPR, and in 2019 the powers that be made that order precedential. That order does say that “The Board does not envision that live testimony will be necessary at many oral arguments,” id. at page 2, and it does not indicate that live testimony will be appropriate in all the situations in which the Standing Order of the board for interferences (quoted in my 2011 article) indicates that it is appropriate, but it is a start.

            Now we must hope that the Article III judges on the Federal Circuit keep their hands off. Since it was their unsolicited dicta that initiated the problem, it is not inconceivable that they will wade back into the situation by holding that what they once wrote is now engraved in stone unless overruled by the Supreme Court or reversed by act of Congress (neither of which remedies are likely to occur). However, there is no reason for them to do that – and, to paraphrase the ending of my 2011 article, it is devoutly to be hoped that they won’t!