Takeaway: A party is not required to cross-examine a declarant at the time when the opposing party is first served with the declaration; rather, cross-examination can take place after supplemental evidence relating to the direct testimony has been filed.

In its Order, the Board mooted Patent Owner’s Request for Authorization to depose Petitioner’s declarant and ordered Petitioner to expunge the declarant’s testimony from the proceedings.     

During a conference call, Patent Owner sought authorization to depose Petitioner’s declarant Mr. Ortiz. Prior to filling the Ortiz Declaration with its Reply and prior to the Patent Owner Response, Petitioner had served Patent Owner with the Ortiz declaration as supplemental evidence in response to an objection by Patent Owner. In its Response, Patent Owner characterized portions of the Ortiz Declaration as being deficient. In Reply to the Patent Owner’s Response, Petitioner filed the Ortiz Declaration and cited it as rebuttal evidence of public dissemination of the alleged prior art.

Petitioner argued that it would be improper to allow Patent Owner to cross-examine Mr. Ortiz at this late stage because Patent Owner should have deposed him after Petitioner first served Patent Owner with the Ortiz Declaration. Patent Owner cited § 42.53(d)(2), which states that “[c]ross-examination should ordinarily take place after any supplemental evidence relating to the direct testimony has been filed.” The panel noted that 37 C.F.R. § 42.51(b) (1)(ii) provides for cross-examination of declaration testimony. Petitioner asserted that this rule does not require the declaration testimony to be filed. Patent Owner argued that it would be overly burdensome and expensive to force a party to cross-examine each declarant before the other party even decides whether or not to file and rely upon that declarant’s testimony.

The Board found Patent Owner’s position more persuasive. The Board stated that “[c]ross-examining a declarant on evidence that may never be filed potentially wastes resources and time.” Thus, the Board concluded that the filing of the Ortiz Declaration with the Reply rendered it ripe for cross-examination.

Petitioner asserted that providing Mr. Ortiz for deposition at this late stage would be overly burdensome and costly. Thus, Petitioner moved to expunge the Ortiz Declaration and would not rely upon it. Patent Owner agreed to this offer and concession. Thus, the Request to depose Mr. Ortiz was rendered moot and Petitioner was ordered to expunge the Ortiz Declaration from the proceedings.

ACTIFIO, INC. v. DELPHIX CORP., IPR2015-00014, IPR2015-00016, IPR2015-00019, IPR2015-00034, IPR2015-00025, IPR2015-00026, IPR2015-00050, IPR2015-00052, IPR2015-00100, IPR2015-00108, IPR2015-00128

Paper 41: Order re. Request for Authorization to Depose Declarant Joseph Ortiz

Dated: December 1, 2015

Patents: 8,150,808, 8,161,077, 8,548,944, 8,566,361, 8,468,174

Before: Karl D. Easthom, Patrick R. Scanlon, and Minn Chung

Written by: Easthom