A recent order from the Patent Trial and Appeal Board (“Board”) in an inter partes review illustrates how the Board may handle situations where a party seeks to depose a declarant whose testimony was submitted through a declaration from another proceeding – requiring the party to demonstrate that the deposition is “necessary in the interest of justice.”

Generally, in an IPR, direct testimony is submitted in the form of an affidavit. See, e.g., 37 C.F.R. § 32.23(a). The declarant is then subject to cross-examination by deposition. However, a patent in an IPR may have been the subject of a previous dispute, e.g., district court litigation or reexamination, where testimony, declarations or expert opinion may have addressed matters related to the ongoing IPR. When such materials are submitted as exhibits in an IPR, it is not automatic that the declarant will be subjected to cross-examination by deposition. See, e.g., 37 C.F.R. § 42.51.

In its recent order, the Board addressed the patent owner’s motion for additional discovery, in particular, to take the deposition of a declarant whose testimony was introduced through a declaration that was originally submitted during reexamination proceedings of a related patent. Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., IPR2013-00576 (PTAB Aug. 26, 2014) (Paper 31).

The Board stated that “because that Declaration is not new testimony prepared for purposes of this inter partes review, cross-examination of [the declarant] is not provided as routine discovery under § 42.51(b)(1)(ii).” The Board authorized the patent owner to file its motion for additional discovery. However, the patent owner’s deposition request would be evaluated under the Board’s “necessary in the interest of justice” standard.

Pursuant to this standard, the patent owner would be required to show that the requested deposition represented more than a “mere possibility of finding something useful.” Rather, “a party requesting discovery already should be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered.” The Board stressed that “‘Useful’ does not mean merely ‘relevant’ or ‘admissible,’ but rather means favorable in substantive value to a contention of the party moving for discovery.”

More than the mere possibility of finding something useful is the first of five factors for evaluating a motion for additional discovery that the Board outlined in Garmin Int’l Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001 (PTAB Mar. 5, 2013) (Paper 26, pp. 6-7). The entire Garmin five-factor list includes:

  1. Whether there is more than a mere possibility of finding something useful.
  2. Whether the party seeking discovery is merely asking for the other party’s litigation positions and the underlying basis for those positions, which the Board views as improper.
  3. Whether the request seeks information that a party can reasonably figure out or assemble without the discovery request.
  4. Whether the request for additional discovery is includes easily understandable instructions.
  5. Whether the request is not overly burdensome to answer, given the expedited nature of IPRs.

When the Patent Owner subsequently filed a motion for additional discovery, the Board denied it, citing the fifth Garmin factor – characterized as “Requests Not Overly Burdensome to Answer.” The Board stated that “[w]e will not compel Petitioner to produce a witness who is not under Petitioner’s control, who may reside in Japan, especially where such action may require a court subpoena and/or invoke the Hague Convention.” (Paper 36, p. 2.)

With respect to cross-examination, the Board’s orders illustrate the disparate treatment of testimony prepared and submitted pursuant to the IPR, and testimony taken from another proceeding. Having to demonstrate that cross-examination by deposition would be “necessary in the interest of justice” through a motion for additional discovery is a hurdle that does not exist where direct testimony is prepared for the IPR itself. A declaration from a prior proceeding may not ideally address the Board’s IPR grounds. However, in view of the added difficulty of obtaining additional discovery in an IPR, there may be tactical advantages to re-using prior testimony where appropriate.