In post-grant patent trials under the Leahy–Smith
America Invents Act (AIA), limited discovery and techsavvy
judges magnify the importance of deposition
practice. Indeed, the first five years of post-grant trials
have shown that PTAB judges often read transcripts
from cover to cover and rely on cross-examination testimony
to support their decisions.
Therefore, PTAB counsel must be prepared to make
the most of depositions while being mindful of an increasingly
complex web of statutes, rules, and other
guidance. This article will provide an overview of that
authority and the nuanced body of related case law that
has emerged over the first five years of post-grant trials
before the PTAB.