December 23, 2014

Unavailability of IPR Witness for Deposition Undercuts Testimony

By Matthew L. Cutler, Principal

Testimony from a witness in a prior reexamination, or other, proceeding may be useful information to a party in inter partes review proceedings. The party propounding such testimony should be prepared, however, to produce that witness for deposition in the discovery phase of the IPR, or the testimony may be given little or no weight by the Board. This scenario arose in Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc. IPR2013-00576, in the context of a Motion for Additional Discovery.

More specifically, the Petition included an expert declaration from a reexamination proceeding that related to the patent-at-issue. Petitioner relied upon the declaration testimony in the past and again in the instant proceeding. Order at 2.  In view of that testimony, Patent Owner filed a Motion for Additional Discovery seeking the deposition of the expert.

The Board denied Patent Owner’s Motion for Additional Discovery, finding that it was not necessary in the interest of justice. The main reasoning behind the denial was that the expert witness was not under Petitioner’s control and may even have resided in Japan, making the requested discovery burdensome. Id. at 2.

All was not lost for Patent Owner, however, as the Board noted that, if Petitioner did not produce the witness for cross-examination, the testimony relied upon related would be given little or no weight, in light of Patent Owner not having the opportunity to challenge the testimony. Id. at 2.  Accordingly, Patent Owner received a favorable outcome even though the Motion for Additional Discovery was denied.