Takeaway: One must cross-examine a witness in the discovery period directly after the witness’s testimony is provided and cannot wait until the close of discovery to cross-examine the witness on the original declaration, even if the witness provides a declaration in support of the party’s reply.

In its Order, the Board denied Patent Owner’s request to conduct re-examination of Petitioner’s expert on his Petition testimony after Due Date 2 (the due date of Petitioner’s Reply). Patent Owner argued that under 37 C.F.R. § 42.53(d)(2), any new declaration submitted by the expert in support of Petitioner’s Reply would constitute supplemental evidence relating to direct testimony, therefore, cross-examination of the expert should not be taken until the Reply declaration is filed or the deadline has passed.

The Board disagreed with Patent Owner, and held that the more efficient course is to expect a party to conduct cross-examination of a witness once the witness’s direct testimony becomes ripe for examination, which would be after any supplemental evidence relating to direct testimony is due and at least one week before the due date of the party’s next substantive paper. The Board does not believe postponing cross-examination until the close of evidence promotes efficiency because it impairs the orderly development of the record and delays identification of factual issues to be resolved during trial.  Further, the Board does not consider a witness’s reply declaration to be supplemental evidence to the witness’s petition declaration because the two declarations do not relate to the same issues and a reply declaration may only be used to rebut evidence proffered by a patent owner in its response, not to present additional proofs to bolster the witness’s petition declaration.

A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511
Paper 17: Order on Conduct of the Proceeding
Dated: October 15, 2014
Patent: 8,534,497 B2
Before: Linda M. Gaudette, Donna M. Praiss, and Scott E. Kamholz
Written by: Kamholz