The PTAB recently clarified the instances in which it might consider a motion to limit the cross-examination of a declarant and when it might not. According to prior decisions by the PTAB, anything a declarant says in a declaration was fair game for cross-examination of that declarant in a post-issuance trial proceeding. As I explained back in October, the PTAB had previously refused to allow a party to file a motion to limit the scope of cross-examination to the grounds on which trial was instituted. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00128, Paper 34 (Sept. 16, 2013). For example, in Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 18 (May 3, 2013); Kyocera Corp. v. Softview LLC, IPR2013-00007, Paper 18 (May 3, 2013); and Kyocera Corp. v. Softview LLC, IPR2013-00007, Paper 18 (May 3, 2013), the Board noted that the witness submitting a declaration must be made “available for cross examination on all direct testimony.” A similar decision was made in Micron Tech., Inc. v. The Bd. of Trustees of the Univ. of Illinois, IPR2013-00005, Paper 21 (Apr. 15, 2013); Micron Tech., Inc. v. The Bd. of Trustees of the Univ. of Illinois, IPR2013-00006, Paper 18 (Apr. 15, 2013); Micron Tech., Inc. v. The Bd. of Trustees of the Univ. of Illinois, IPR2013-00008, Paper 27 (Apr. 15, 2013), where the Board explained that under 37 C.F.R. 42.53(d)(5)(ii), the proper scope of cross examination is the scope of direct testimony. The Board explained that testimony about grounds on which trial was not instituted “may be relevant to the state of the prior art.” Then, in October, the Board issued a decision in ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00133, the petitioner “requested that cross- examination be limited to the grounds on which trial was instituted.” The Patent Owner noted that 37 C.F.R. 42.53(d)(5)(ii) allows cross- examination into “all statements” made by the declarant, “including statements unrelated to the grounds on which trial was instituted.” The Board agreed with the petitioner this time, citing Section (I)(F) of the Office Patent Trial Practice Guide’s statement that “discovery before the Board is focused on what the parties reasonable need to respond to the grounds raised by an opponent,” 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012). “Accordingly, the Board indicated that the cross-examination is limited to statements of [the declarant] related to the grounds on which trial was instituted.”
The Board has recently distinguished ContentGuard Holdings in Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013- 00266, Paper 27 (Nov. 26, 2013). During the initial conference call with the Board, the Petitioner sought authorization to file a motion to limit the scope of cross examination of its expert “to those portions of” the expert’s declaration “that relate to the grounds on which inter partes review was instituted. [Petitioner] cites ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00133, Paper 30 at 2 (PTAB Oct. 9, 2013), to support its request.” The Board distinguished the ZTE case because “The Board determined that references cited in the grounds not instituted on did not anticipate and/or render obvious all of the claim limitations.
“In contrast, in the instant proceeding, the Board did not institute on all grounds because of redundancy. . . . In fact, throughout the petition, [Petitioner] states that the references relate to the same or similar subject matter. . . . Thus, the grounds on which inter partes review were instituted are reasonably related to the grounds on which this panel declined to institute inter partes review due to redundancy. The cross-examination testimony already is limited to the scope of the direct testimony, see 37 C.F.R. § 42.53(d)(5)(D)(ii), and the Board declines to limit it further.”