By Matthew L. Cutler, Principal
To date, the PTAB has sparingly used its power to issue subpoenas in inter partes review proceedings. In two recent cases, Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, (IPR2014-00553) and LG Chem, Ltd. v. Celgard, LLC (IPR2014-00692), the Board granted requests to compel depositions of third party witnesses. Here, we take a look at the fact patterns that gave rise to this unusual IPR event.
The proper procedure for obtaining a subpoena in inter partes review is to make a “Motion for Authorization” to seek a subpoena the Patent Trial and Appeal Board (PTAB) which identifies the witness and explains the relevance of the testimony. If the request is granted, the PTAB proceeds to issue an order permitting the moving party to apply for a subpoena pursuant to 35 U.S.C. § 24.
In the Marvell case, Petitioner filed declarations by two experts to support its contention that certain references qualified as prior art, one a librarian and the other from a publishing company. Neither of the witnesses, however, were willing to voluntarily appear for a deposition. Patent Owner disputed that the references were prior art and requested the Board to compel depositions of the two witnesses to allow relevant cross-examination. ‘553 Order at 2. Petitioner argued that cross-examination was unnecessary since the declarations were merely limited to authentication of documents. Id. at 3. The Board disagreed, finding that the publication date for the references was in dispute. Accordingly, the Board granted Patent Owner’s request to compel depositions of the two witnesses and permitted Patent Owner to seek a subpoena under 35 U.S.C. § 24. Id. at 3.
In the LG Chem case, Patent Owner submitted testimony with its Response, and Petitioner sought to cross-examine the witness. ‘692 Order at 2. The witness was an employee of Patent Owner when the declaration was filed, but had since left and refused to attend the deposition voluntarily. The Board noted three key facts. First, the deposition of the witness would be considered routine discovery since his original testimony was via declaration. Second, there was little time remaining for Patent Challenger to submit its reply. Third, Patent Owner did not oppose compelling a deposition. Id. at 2-3. Given these three points, the Board waived the requirement that Petitioner file a motion for authorization under 37 C.F.R. § 42.52(a), and granted what the Board deemed to be an oral motion for authorization to compel testimony. Id. at 3. Authority to serve the subpoena was also granted by the Board.