Although this seems pretty obvious, failure to make an IPR declarant available for deposition likely will cause the Board to exclude the declarant’s testimony from the trial, absent agreement of the parties or special circumstances. In 1964 Ears, LLC. v. Jerry Harvey Audio Holding, LLC, IPR2016-00494, Order – Conduct of Proceeding (January 10, 2017), the Board authorized the Petitioner to file a motion to strike a declaration because the Patent Owner would not (or could not) make the declarant available for deposition during the time period for Petitioner’s discovery.
The parties had initially agreed on a deposition date for Patent Owner’s declarant. The week before the deposition, Patent Owner notified Petitioner that not only was the witness now unavailable on the agreed-on date, but that the witness was not available at any time prior to the due date for Petitioner’s Reply to Patent Owner’s Response. The Board indicated that, given Petitioner’s inability to cross-examine the declarant prior to the due date for Petitioner’s Reply, the “likely remedy” would be to strike the declaration from the trial. Nonetheless, Patent Owner’s counsel maintained that the declarant Mr. Harvey was not available for deposition prior to the due date for Petitioner’s Reply, and that he was acting in accordance with his client’s instructions in that regard. Interestingly, Patent Owner’s counsel did not seek any extension of time to file its Reply, which might have allowed the parties to complete the deposition.
The Board authorized Petitioner to file a motion to strike the declaration. The Board ordered Petitioner to identify with particularity the exhibits to be stricken and to explain the basis for the motion. The Board authorized the Patent Owner to file a response to Petitioner’s motion to strike, and Petitioner to file a reply.
Every litigator has encountered difficulty with deposition scheduling and witness availability. Usually the parties can reach an agreement, but sometimes they cannot and consultation with the court/Board becomes necessary. Although the Board has not yet ruled on the deposition issue in this proceeding, it is clear from this order that if you cannot make your IPR declarant available for deposition during the applicable discovery period, you run a serious risk that the declarant’s testimony will be excluded from the trial. It is wise to ask your expert up front whether there are any potential scheduling issues that might make it difficult to schedule the expert’s deposition during the discovery period. If there are, you should be proactive in contacting opposing counsel to try to reach an agreement.