June 27, 2014

Declaratory Testimony from File History is “Affidavit Testimony” Which Requires Deposition

By Matthew L. Cutler, Principal

Most declaration testimony in an inter partes review proceedingis newly developed as part of the IPR.  On occasion, however, parties to an IPR have used previously generated declarations in support their positions.  In Ikaria, Inc. v. GeNO LLC, IPR2013-00253, the PTAB considered the issue of whether, when a Patent Owner includes, in its Response, an expert declaration that was submitted during prosecution of the challenged patent, Petitioner is entitled to cross-examine the expert.

In Ikaria, Petitioner argued that, pursuant to 37 CFR § 42.51(b)(1)(ii), the testimony of an expert cited in a Patent Owner’s response was “affidavit testimony.” Therefore, the Rules required cross examination of the expert as part of routine discovery.  Patent Owner disagreed, arguing that the declaration was not prepared for the purposes of this proceeding and, as such, cross-examination was not required.  The Board disagreed, finding that cross-examination was required.

Further complicating matters was the fact that the expert was unable to be deposed due to medical issues. Since a deposition was unable to be arranged to comply with the Rules, Patent Owner filed a motion to expunge the expert declaration from the record.