Takeaway: The Board’s rules for inter partes review do not specifically provide a mechanism for a party to provide observations on cross-examination of its own witnesses.

In its Decision, the Board granted Petitioner’s Motion to Expunge Patent Owner’s Motion for Observation. Petitioner’s Response to Patent Owner’s Motion for Observation was also expunged.

Patent Owner had filed a Motion for Observation in order to comment on the cross-examination of Patent Owner’s own expert (Dr. Thomas Conte), which Petitioner had relied on in its Reply. Patent Owner cited cited Zhongshan Broad Ocean Motor Co. v. NIDEC Motor Corp., IPR2014-01121, for the proposition that “[t]hese observations are needed to help the [B]oard by having ‘context-providing statements identified by the adverse party.’”

Petitioner, in opposing Patent Owner’s Motion for Observation, took the view that the Scheduling Order in this case had “only authorized Patent Owner to file observations on the cross-examination of a reply witness[,]” and “that patent owner’s own expert, relied on in a response to a petition, ‘is not a reply witness.’” Petitioner cited a Board decision,Schott Gemtron Corp. v. SSW Holding Co., Inc., Case IPR2013-00358, in support of its position, and argued that the Zhongshan case relied on by Patent Owner was not relevant to the instant facts.

Patent Owner attempted to counter by relying on Federal Rule of Evidence 106, by arguing that observations were necessary in order to address certain discrepancies, and by providing comments that the relied-upon Zhongshan case was indeed applicable. Nonetheless, the Board sided with Petitioner.

In particular, the Board held that “Patent Owner’s Observation is not authorized by the Scheduling Order because it is does not concern the cross-examination testimony of a reply witness.” Also, “because Patent Owner’s Observation concerned the cross-examination testimony of its own witness,” Patent Owner should have sought, but did not seek or receive, “Board authorization before filing its Observation.” In its discussion, the Board distinguished the facts in the instant case from those in Zhongshan.

These developments resulted in the Board’s concluding that “Patent Owner’s Observation is unauthorized and should be expunged.” The Board also expunges Petitioner’s Response to the Observation.

Seagate Technology (US) Holdings, Inc. and Seagate Technology LLC v. Enova Technology Corporation, IPR2014-01178; IPR2014-01297; IPR2014-01449

Paper 45: Decision Granting Motion to Expunge Motion for Observation

Dated: October 28, 2015

Patent: 7,900,057 B2

Before: Michael R. Zecher, Neil T. Powell, Georgianna W. Braden, and Timothy J. Goodson

Written By: Goodson