Takeaway: A party runs the risk that direct testimony will not be considered, if the declarant is not made available for cross-examination, even if the declarant is an employee of a third party that is requiring a subpoena before being available for cross-examination.

In its Order, the Board denied Patent Owner’s request to file a motion to strike; authorized Petitioner to file a motion to apply for a subpoena to compel the cross-examination testimony of Lindsey Miles; and authorized Patent Owner to file an opposition thereto.

Petitioner relied upon statements made by Lindsey Miles in a “declaration” to supports its assertion that an exhibit was a prior art printed publication. Patent Owner argued in its Preliminary Response that the “declaration” was not a sworn affidavit and should not be given any weight. The Board instituted trial stating that Patent Owner should object to the “declaration” if it was not admissible, not merely argue that it should be given no weight. Accordingly, Patent Owner timely served objections to the “declaration,” and Petitioner did not respond to the objection.

During a conference call, Patent Owner request authorization to strike the “declaration” because it is not a sworn affidavit or declaration and because Petitioner would not make Ms. Miles available for cross-examination. Petitioner explained that Ms. Miles was an employee of a third party and that she would be available to testify if a subpoena were sought. The Board denied Patent Owner’s request as premature because until Patent Owner’s initial discovery period closes, Petitioner has an opportunity to make Ms. Miles available for cross-examination.

Petitioner argued that its obligation to make its declarant available for cross-examination was satisfied by not opposing a motion to compel by Patent Owner. The Board disagreed, stating that Petitioner should make the declarant available and seeking to file a motion for authorization to apply for a subpoena to compel testimony would satisfy its obligation. Accordingly, upon request from Petitioner, the Board authorized Petitioner to file a motion for authorization to apply for a subpoena to compel the cross-examination testimony of Ms. Miles.

The Board also noted that because of the defects in the “declaration,” the statements therein would likely be accorded little weight at trial. The Board also stated that it was not appropriate for Petitioner to correct the defects at this stage. Petitioner had an opportunity to serve a corrected declaration as supplemental evidence within 10 days of Patent Owner’s objections, but failed to. Petitioner will also not be able to supplement the “declaration” during Ms. Miles deposition because it is only an opportunity for Patent Owner to cross-examine Ms. Miles not for Petitioner to supplement the direct testimony. The Board also indicated that it would also be unlikely Petitioner could use the last remaining procedure for supplementing the “declaration,” a motion for late submission of supplemental information, because such a motion requires the moving party to “show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.”

International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2015-01322

Paper 15: Order Denying Patent Owner’s Request to File a Motion to Strike Exhibit, Authorizing Petitioner to File Motion to Apply for Subpoena to Compel Cross-Examination Testimony of Lindsey Miles

Dated: February 2, 2016

Patent: 6,314,409 B2

Before: Kristen L. Droesch, Barbara A. Parvis, and Matthew R. Clements

Written by: Droesch