A.C. Dispensing Equipment Inc. v. Prince Castle LLC

Addressing the appropriate timing of cross-examination of expert witnesses in an inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s request to delay cross-examination of the petitioner’s expert witness until after the due date of the petitioner’s reply, finding that a witness’ reply declaration is not supplemental evidence.  A.C. Dispensing Equipment Inc. v. Prince Castle LLC, Case No. IPR2014-00511 (PTAB, Oct. 15, 2014) (Kamholz, APJ).

The patent owner sought to delay cross-examination of the petitioner’s expert until either the petitioner’s reply was filed or the deadline for the same had passed.  The patent owner argued that under 37 C.F.R. § 42.53(d)(2), any new declaration submitted by the expert in support of the petitioner’s reply would constitute supplemental evidence, and therefore cross-examination of the expert should be delayed until the close of evidence.

The PTAB disagreed, explaining that “the more efficient course . . . is to expect a party to conduct cross-examination of a witness once the witness’s direct testimony becomes ripe for cross examination, i.e., after any supplemental evidence relating to direct testimony is due, and at least one week before the due date of the party’s next substantive paper.”  The PTAB felt postponing cross-examination until the close of evidence impaired the orderly development of the record and delayed identification of factual issues to be resolved during trial.  Further, the PTAB did not consider a witness’s reply declaration to be supplemental evidence to the petition declaration because the two declarations do not relate to the same issues, since a reply declaration may only be used to rebut evidence proffered by a patent owner in its response, not to present additional proofs to bolster the witness’ original declaration.