United States: Deposition Of Declarants Is Limited After Routine Discovery

Valeo, Inc. v. Magna Electronics, Inc.

In an Order on Conduct of the Proceedings, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB or Board) denied a patent owner's request to depose a petitioner's declarant whose declarations had been served but not made of record.  Valeo, Inc. v. Magna Electronics, Inc., Case Nos. IPR2014-00221, -00227 (PTAB, Nov. 13, 2014) (Clements, APJ).

In a Petitioner's Reply to Patent Owner Response, the petitioner submitted new evidence that it contended was directly responsive to arguments made by the patent owner in its Patent Owner Response and directed to the credibility of the patent owner's expert, rather than to bolster the underlying grounds of unpatentability on which the IPR was instituted.  The patent owner disagreed with the petitioner's characterization and further asserted that one of the cited references did not constitute prior art.  The Board reserved the issue of whether the new evidence was outside the proper scope of a reply to the final written decision.

Meanwhile, in response to the challenge that the new evidence did not constitute prior art, the petitioner served the patent owner with two declarations directed to the authenticity of the prior art reference, but did not make the declarations of record by filing them in the Patent Review Processing System (PRPS). The patent owner timely objected to each of the declarations.

During a teleconference, the patent owner indicated that it intended to file a Motion to Exclude regarding the new evidence and expected that the petitioner would rely upon the declarations as exhibits to oppose the Motion to Exclude.  The patent owner stated it had not yet tried to depose the declarant because it believed that it was not entitled to do so until the petitioner relied upon the declarations by entering them in the record.  The patent owner requested an order from the Board indicating that it was entitled to depose the declarant either before filing the Motion to Exclude or a reply in support of the motion.

The Board noted that "the declaration was not served recently" and that the patent owner had been in possession of the declarations "for some time."  The Board explained that even though the declarations were not filed in PRPS, the patent owner was not precluded from pursuing a deposition of the declarant.  Cross-examination of an opposing party's declarant is available as routine discovery, regardless of whether the petitioner had actually filed the declaration.  Accordingly, the Board denied the request for deposition as improper additional discovery.

Practice Note:  Depositions of known declarants within a PTAB proceeding should be sought during the period of routine discovery, even if the declaration at issue has not yet been made of record.

Deposition Of Declarants Is Limited After Routine Discovery

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