Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc.: Order Regarding Routine Discovery IPR2013-00576
Thursday, August 21, 2014

Takeaway: Cross-examination of a witness regarding his or her declaration will not be permitted as routine discovery if the declaration was not prepared for purposes of the proceeding in question.

In its Order, the Board ordered that cross-examination of witnesses providing testimony or statements in the Declaration of Dr. Takashi Shibanuma, the Second Declaration of Mr. Robert E. Low, and the Certification of Mr. Donald W. Hanley would not be provided as routine discovery under 37 C.F.R. § 42.51(b)(1)(ii).  The Board also ordered Patent Owner to request a conference call with the Board by a certain date if Patent Owner intended to seek authorization to file a motion for additional discovery in connection with any of these three exhibits.

Patent Owner had sought guidance on whether cross-examination of the three aforementioned witnesses relating to their above-identified testimony, respectively, would be provided as routine discovery under 37 C.F.R. § 42.51(b)(1)(ii).  The testimony in question had been relied on in Petitioner’s Reply to Patent Owner’s Response.

The Board explained that cross-examination of a witness is permitted as routine discovery under 37 C.F.R. § 42.51(b)(1)(ii) if the declaration of that witness filed in support of Petitioner’s Reply was prepared for the purposes of the instant inter partes review.  In contrast, the Board indicated that cross-examination of the witness would not be provided as routine discovery if that witness’s declaration was not prepared for purposes of the instant inter partesreview (e.g., preexisting documentary evidence filed previously in another proceeding).

The Board held that cross-examination of Dr. Shibanuma and Mr. Low would not be provided as routine discovery under § 42.51(b)(1)(ii) because their Declarations were not new testimony prepared for purposes of this inter partes review.  Instead, these Declarations had been previously filed in reexamination proceedings.  Nonetheless, the Board said that it would consider whether Patent Owner had an opportunity to cross-examine these witnesses and give the corresponding Declarations appropriate weight, if any, and that the parties may agree between themselves to provide cross-examination if so desired.

The Board also indicated that cross-examination of Mr. Hanley with respect to his translation Certification would not constitute routine discovery, and that Patent Owner had other options available to it in this respect.  Further, the Board said that it would consider whether Patent Owner has had an opportunity to cross-examine Mr. Hanley.

Also, the Board indicated that if Patent Owner wished to request authorization to file a motion for additional discovery, Patent Owner should request a conference call with the Board by a certain date.  And if the parties had not contacted the Board by that date, then the Board would assume that the parties had resolved the matter.

Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., IPR2013-00576
Paper 29: Order on Conduct of the Proceeding
Dated: August 15, 2014
Patent 8,444,874 B2
Before: Linda M. Gaudette, Francisco C. Prats, and Jacqueline Wright Bonilla
Written by: Bonilla

 

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