A Patent Trial and Appeal Board (PTAB) panel has authorized a patent owner to seek discovery from a third-party witness who submitted a declaration in support of the unpatentability challenges presented in an inter partes review (IPR) proceeding. Specifically, the PTAB authorized the patent owner to apply for a subpoena in district court under 35 U.S.C. § 24 to seek the deposition of the third-party witness.

Following institution of the IPR, the patent owner timely served objections challenging the publication date of one of the prior art references relied upon by the petitioner. In response, the petitioner served on the patent owner supplemental evidence, including the declaration of a third-party witness with purported knowledge regarding the publication date of the prior art reference in question. The petitioner also obtained permission from the board to file its supplemental evidence under 37 C.F.R. § 42.123(b). Subsequently, the patent owner requested that, as matter of fundamental fairness and due process, the board either expunge the evidence from the record or permit the patent owner—pursuant to 37 C.F.R. § 42.52(a)—to seek the deposition of the third-party declarant. 

Having considered the parties positions, the board authorized the patent owner to apply for a subpoena under 35 U.S.C. § 24 from the district court where the testimony of the third-party witness is to be taken. The Board limited the scope of the deposition to the first public availability of the reference in question. The board also imposed strict time limits on the deposition—one-hour of cross-examination by the patent owner, 15 minutes of redirect examination by the petitioner, 30 minutes of redirect examination by the third party, and no more than 30 minutes of re-cross-examination by the patent owner.

IBM, Corp. v. Intellectual Ventures I, LLC, IPR2014-01385, Paper No. 26 (PTAB May 27, 2015).