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Mexichem Amanco Holdings v. Honeywell International, Denying Motion for Additional Discovery IPR2013-00576

Takeaway: The Board found that a deposition of a declarant in a previous reexamination is overly burdensome where the declarant is not under the party’s control, resides in Japan, and may require a subpoena or to invoke the Hague Convention. Further, a declaration will be given little to no weight if the declarant is not made available for cross-examination.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery under 37 C.F.R. § 42.51(b)(2). The Board previously authorized Patent Owner to file the Motion for Additional Discovery as it pertained to a deposition of an expert who had previously prepared a declaration for a reexamination that was relied on by Petitioner in its Reply to Patent Owner’s Response. After considering Patent Owner’s Motion and Petitioner’s Response, the Board determined that, although Patent Owner’s position has merit in relation to certain Garmin factors, it would not grant the request for additional discovery. The Board was not persuaded that the deposition was “necessary in the interest of justice” under the circumstances of this case. Particularly, the Board determined that to make the expert available for a deposition may be “overly burdensome to answer” (fifth Garminfactor), because the expert is not under Petitioner’s control, resides in Japan, and such action may require a court subpoena and/or to invoke the Hague Convention.

Although the Board denied the request for a deposition, the Board noted that to the extent Petitioner relies on the expert’s previously prepared declaration, the Board will take into consideration whether Patent Owner had an opportunity to cross-examine. Thus, if Petitioner does not produce the expert for cross-examination, then that declaration will be given little to no weight.

Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., IPR2013-00576
Paper 31: Order on Conduct of the Proceeding
Dated: August 26, 2014
Patent: 8,444,874 B2
Before: Linda M. Gaudette, Francisco C. Prats, and Jacqueline Wright Bonilla
Written by: Bonilla

© 2020 Faegre Drinker Biddle & Reath LLP. All Rights Reserved.National Law Review, Volume IV, Number 256


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The Intellectual Property Litigation Practice at Drinker Biddle & Reath LLP recognizes that a successful IP enforcement strategy can make an important contribution to a company's bottom line. Our attorneys help a wide variety of clients protect what is theirs and police the marketplace against infringements and unfair competitive practices.

Our attorneys have litigated infringement suits across a broad range of industries and technologies, including pharmaceuticals, medical devices, dental methods, computer software, automobile designs,...