United States: Cross-Examination Is Not Authorized As Routine Discovery Where The Relied-Upon Testimony Is From An Underlying Litigation

On January 30, 2017, the Patent Trial and Appeal Board (PTAB or "the Board") granted in part the petitioner's motion to strike various declarations of a named inventor because the patent owner failed to make him available for deposition prior to the deadline for the petitioner's reply. The declarant was also the founder of the patent owner and the parties had originally scheduled his deposition, and a Notice of Deposition had been filed and served. Subsequently, the patent owner informed the petitioner that it was unable to produce the declarant for cross-examination at the previously agreed date or any time before the petitioner's reply was due. After receiving authorization from the PTAB, the petitioner filed a motion requesting that the Board strike and expunge Exhibits 10041, 2028, 2037 and 2038—all of which contain declarations from the named inventor. Exhibits 2037 and 2038 incorporate by reference Exhibits 1004 and 2028, two declarations filed in the underlying district court litigation.

The PTAB confirmed that a petitioner is entitled to routine cross-examination discovery based on declarations specifically prepared for an inter partes review proceeding. See 37 C.F.R. § 41.51(b)(1)(ii) (2015) (authorizing routine discovery for the "[c]ross examination of affidavit testimony prepared for this proceeding"). Accordingly, and with no objection from the patent owner, Exhibits 2037 and 2038 were stricken and expunged from the proceeding. The PTAB, however, denied the petitioner's request to strike Exhibits 1004 and 2028 because those declarations had been prepared for the parallel district court litigation many months before a petition had been filed. The Board reasoned that a declaration prepared for a different proceeding is not transformed into routine discovery simply because it is incorporated by reference. The Board further noted that it would consider the fact that the inventor was not cross-examined when weighing the evidentiary value of those two exhibits.

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