Takeaway: Where the parties can address issues raised by foreign declarants of one party and allows reasonable opportunity for the opposing party to provide responsive evidence, the Board may approve a revised schedule.

In its Order, the Board determined that ordering production of Petitioner’s foreign declarants who have refused to appear in the U.S. or striking their declarations otherwise is not necessary.

Patent Owner had requested a conference call seeking authorization to file a motion to order Petitioner to produce all of its foreign declarants for cross-examination by deposition in the United States, or to strike the new declarations. Patent Owner did not intend to cross-examine the foreign declarants by any means other than in-person deposition. The Board had ordered both parties to agree to a schedule that allowed a date for the Patent Owner to file a Sur-Reply to issues raised by Petitioner’s Reply declarants, additional time for cross-examination of Patent Owner’s potential new witnesses, and the required pre-hearing due dates in the existing schedule..

Patent Owner subsequently filed a Notice of Filing Parties Proposed Revised Schedule, leading to a second conference call to approve and discuss the schedule. The Board determined that the “importance of the issues raised by Petitioner’s Reply and declarants compels that these issues be addressed on the full record.” The Board concluded that the parties’ Proposed Revised Schedule allows the parties to address issues raised by Petitioner’s declarants and allows Patent Owner a reasonable opportunity to provide responsive evidence including testimony through its Sur-Reply.

BLACKBERRY CORP and BLACKBERRY LTD. v. ZIPIT WIRELESS INC., IPR2014-01506, IPR2014-01507, IPR2014-01508, IPR2014-01509
Paper 29: Conduct of Proceedings & Revised Scheduling Order
Dated: November 9, 2015
Patents: 7,894,837, 7,292,870, 8,086,678, 8,190,694
Before: Trevor M. Jefferson, Neil T. Powell, and Frances L. Ippolito
Written by: Jefferson