Takeaway: Although counsel’s contact with a witness that is represented by counsel may not be proper, if no testimony from that witness has yet been filed in the proceeding, such contact may be irrelevant.

In its Order, the Board addressed an issue raised during a conference call requested by Petitioner related to Patent Owner’s contact with a witness. Petitioner alleged that counsel for Patent Owner contacted Mr. John Prymak without ascertaining whether he was represented by counsel, and asked substantive questions related to prior art that was at issue.  Petitioner argued that the contact was improper and requested authorization to file a declaration of Mr. Prymak “to address the information Patent Owner elicited from Mr. Prymak concerning the Hazzard reference.”

The Board denied Petitioner’s request to file a declaration because no testimony from Mr. Prymak had yet been filed in the proceeding. Thus, Patent Owner’s contact with him was irrelevant to the case up to that point in time.  The Board noted, however, that Petitioner was free to present a declaration from the witness with its Reply, but that the evidence submitted with its Reply must be responsive, “i.e., directly refuting Patent Owner Response evidence, and not new evidence proffered to improve its position.”

AVX Corporation and AVX Filters Corporation v. Greatbatch, Ltd, IPR2014-00697
Paper 18: Order on Conduct of the Proceeding
Dated: December 29, 2014
Patent: 5,905,627
Before: Scott E. Kamholz
Written by: Kamholz