Takeaway: If declarations that were not prepared for the purpose of the post-grant proceeding are submitted with papers in the post-grant proceeding, then the opposing party does not have a right to cross examine the declarants as part of routine discovery. However, the Board may take into account the lack of cross examination when determining the appropriate weight of the declarations.

In its Order, the Board denied Petitioner’s Motion to Cross-Examine two declarants whose declarations were filed with the Patent Owner Response, but were not prepared for the purposes of the inter partes reviews.  Petitioner contended that the declaration testimony is either inadmissible hearsay or direct testimony requiring cross examination under 37 C.F.R. § 42.5(b)(1)(ii).  Petitioner argued that the credibility of the declarants is at issue and the cross examination would be limited to challenging that testimony.  Patent Owner cited to CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033 (Paper 85) and stated that the declarations were not prepared for the purposes of these reviews, therefore, cross examination is not provided by routine discovery.  Further, the declarations were cited for limited purposes and provided overlapping testimony of other declarants who would be cross examined.

The Board noted that the declarations were prepared years ago for the purpose of another proceeding, therefore, cross examination would not be considered to be routine discovery. Therefore, the Board denied the Motion.  However, the Board noted that it would consider that Petitioner did not have the opportunity to cross examine these two declarants in determining the weight of the declarations when making the final decision.  The Board then stated that the parties may agree between themselves whether to provide the requested cross examinations.

GEA Process Engineering, Inc. v. Steuben Foods, Inc., 
IPR2014-00041; IPR2014-00043; IPR2014-00051; IPR2014-00054; IPR2014-00055
Paper 41 (IPR2014-00041); 38 (IPR2014-00043); 39 (IPR2014-00051); 38 (IPR2014-00054); 32 (IPR2014-00055): Order Dated: June 11, 2014
Patent 6,945,013 B2 (IPR2014-00041); 6,475,435 B1 (IPR2014-00043); 6,209,591 B1 (IPR2014-00051); 6,481,468 B1 (IPR2014-00054); 6,536,188 B1 (IPR2014-00055)
Before: Rama G. Elluru, Beverly M. Bunting, and Carl M. DeFranco
Written by: Elluru