Scott Daniels | May 12, 2014
Apart from the disclosure of the asserted prior art references, the most important piece of evidence in an inter partes review is the expert’s declaration. Almost as important are the “observations” that a party may make on its cross-examination of the opposing party’s expert declarant, that is, arguments belittling the testimony of the opposing party’s expert.
A party must be careful, however, in choosing a time in which to take such cross-examination and in choosing a time to seek permission to make its observations. The APJs’ discovery ruling last week in Respironics v. Zoll Medical (IPR2013-00322) is a case-in-point. There, Patent Owner Zoll cross-examined Petitioner Respironics’ expert declarant and the next day asked the APJs for guidance on how and when to request permission to make observations on that cross-examination. The APJs gave a mixed answer, depending on the subject matter of the cross-examination.
The APJs began by distinguishing between the two discovery periods for a patent owner: “the first occurring between the decision to institute and the filing of the patent owner response and motion to amend and the second occurring after the petitioner’s reply to the patent owner’s response and the patent owner’s reply to petitioner’s opposition to the motion to amend.”
Here, the case was in the second patent owner discovery period, i.e., the period after the petitioner has filed a reply to the patent owner’s response and an opposition to a motion to amend. During that second period, the patent owner may depose the petitioner’s declarants and file a reply in support of its claim amendments. The APJs cited the relevant portion of The Office Trial Practice Guide:
In the event that cross-examination occurs after a party has filed its last substantive paper on an issue, such cross-examination may result in testimony that should be called to the Board’s attention . . . .
The Board may authorize the filing of observations to identify such testimony and responses to observations . . . .
The party taking the cross-examination files the observations. The opposing party may file a response to an observation. The opposing party may not file observations without express prior authorization.
Since the Patent Owner in this case had not filed its last substantive paper in response to Petitioner’s opposition to Patent Owner’s motion to amend, “the Patent Owner can address the testimony of Petitioner’s expert on matters concerning the substitute claims proposed in the motion to amend in Patent Owner’s Reply.” (Emphasis added).
Also, since “the Patent Owner has already filed its final substantive paper in response to Petitioner’s challenges on which we instituted trial, and since the Patent Owner had not deposed Petitioner’s expert … prior to filing the Patent Owner Response … the Patent Owner is authorized to file a Motion for Observations on Cross Examination of [Petitioner’s expert] on issues concerning Petitioner’s challenges to the claims on which we instituted trial.” (Emphasis added).
On the other hand, the APJs added that the “Patent Owner may have chosen to defer deposing [Petitioner’s expert] until after filing the Patent Owner Response in an attempt to introduce new issues into the proceeding after Patent Owner’s response period and after first discovery period had concluded.” Accordingly, the APJs exercised their discretion to limit Patent Owner’s motion for observations to the expert’s testimony concerning Petitioner’s Reply to the Patent Owner Response.
None of this is particularly intuitive. It is consistent, however, with the APJ’s imperative of resolving the cases as expeditiously as possible. The message for parties is to depose opposition declarants and make appropriate observations as soon as possible.