Takeaway: The Board may authorize motions for additional discovery based on the identification of documents during cross-examination. Additionally, issues concerning clearly improper lines of questioning during cross-examination should be addressed with the Board during the deposition, or at least objections made on the record for later motions to exclude.

In its Order, the Board authorized Patent Owner to file a Motion for Additional Discovery. During the deposition of Petitioner’s expert, the expert identified several documents that he created contemporaneously with the experiments that he conducted in relation to the proceeding.  These included laboratory notebooks and protocols for the experiments as well as reports related to the experiments.

Patent Owner sought authorization to file a motion seeking discovery of these documents. Petitioner objected on the grounds that the reports were prepared for litigation and could raise privilege concerns.  Petitioner also noted that the notebooks contained information unrelated to the experiments.  Patent Owner was only interested in the pages related to the experiments.

The Board authorized Patent Owner to file a ten page Motion for Additional Discovery, and authorized Petitioner to file a ten page opposition. The Board also authorized the parties to stipulate to changes in Due Dates 4 and 5 to allow for a ruling on the Motion for Additional Discovery.

Finally, Petitioner argued that Patent Owner had gone beyond the scope of Petitioner’s expert’s direct testimony during the deposition. Petitioner argued that while the direct testimony “was in essence only five paragraphs,” the deposition went the full seven hours.  The Board noted that anything reasonably related to the direct testimony would not be considered outside the scope.  Also, the Board advised the parties to contact the Board for guidance during the deposition if they felt a line of cross-examination was clearly improper because little can be done once the deposition is over.  The Board reminded Petitioner that a motion to exclude the cross-examination testimony could be filed, so long as Petitioner objected to the content, form, or manner of taking the deposition on the record during the deposition.

Aker Biomarine AS v. Neptune Tech. and BioResources Inc., IPR2014-00003
Paper 62: Order on Conduct of the Proceeding
Dated: June 6, 2014
Patent: 8,278,351
Before: Lora M. Green and Sheridan K. Snedden
Written by: Green