Routine discovery in review proceedings authorizes cross examination of affidavit testimony. 37 C.F.R. § 42.51(b)(1).  If a petitioner submits affidavit testimony to prove that a publication qualifies as prior art, the patent owner can depose the affiant.  But what happens if rather than submitting an affidavit, a petitioner submits deposition testimony to establish that a publication qualifies as prior art?  The routine discovery rule doesn’t specifically allow for the patent owner to cross examine the deponent from an earlier action. 

This issue recently came before the PTAB in a rather complicated fact pattern in CBM2015-00179.  There, the petitioner is relying on deposition testimony of Atsushi Kawashima taken over a decade ago during litigation between patent owner and a third party to establish that a Japanese publication is prior art.  Patent owner sought to depose Mr. Kawashima.  In response, the petitioner argued that cross examination is not permitted under the routine discovery rule.  Further, petitioner represented to the PTAB that Mr. Kawashima is unavailable.  Patent owner also sought a ruling from the PTAB indicating who is responsible for securing the availability of Mr. Kawashima. 

The PTAB’s order did not directly address what falls within the scope of routine discovery.  However, looking to the facts before it, the PTAB noted that the Kawashima testimony is a pivotal part of petitioner’s challenge—petitioner relies solely on that testimony to establish that a reference is prior art.  The PTAB determined that here it is the petitioner’s responsibility to secure the availability of Mr. Kawashima for deposition and that patent owner is authorized to cross examine him.  If the petitioner is unable to produce Mr. Kawashima for deposition, the PTAB noted that it will consider his unavailability when weighing his testimony.  It remains to be seen whether unavailability could disqualify the reference as prior art. 

One take away from this order is that petitioners should consider what evidence they choose to present to establish that a publication qualifies as prior art.  If possible, submitting a new affidavit from a witness capable of establishing that a reference qualifies as prior art may add a minor cost up front in comparison to relying on prior deposition testimony, but being able to produce the witness for cross examination could save the reference from being disqualified.