Takeaway: If a party proffers a witness’s testimony, that party must make that witness available for cross-examination by the other party.

In its Order, the Board granted-in-part, Petitioner’s Motion to Strike the Declaration of Patent Owner’s witness. Patent Owner submitted the Declaration of Francois Lepron with the Patent Owner Response. Mr. Lepron refused to be deposed for personal reasons. The Board authorized Petitioner to file a Motion to Strike the Lepron Declaration and for Patent Owner to file an Opposition to Petitioner’s Motion to Strike.

Petitioner’s Motion to Strike requested the Board to remove or expunge the Lepron Declaration from the record, and to strike portions of Patent Owner’s Response that cite to the Lepron Declaration. Patent Owner asserts that it has no control over a non-party witness, that Petitioner is responsible for Petitioner’s inability to conduct a timely deposition, and that allegations of misconduct are inappropriate.

Citing 37 C.F.R. § 42.51-42.53, the Board stated that “[a]s a guiding principle of routine discovery…if a party proffers a witness’s testimony, that party must make that witness available for cross-examination by the other party.” Thus, Patent Owner must make Mr. Lepron available for cross-examination by Petitioner. The Board also noted that the efforts to obtain the deposition of Mr. Lepron resulted in a considerable delay in the schedule for the instant review and placed significant burden on the panel as well as the parties, to complete the review prior to the statutory deadline.

Thus, the Board expunged the Declaration (Exhibit 2025), but denied the request to strike portions of Patent Owner’s Response that cite to the Lepron Declaration. Instead, to the extent that Patent Owner relies upon the Declaration as evidence to support argument in the Patent Owner Response, the Board will not give any weight to that reliance on the expunged exhibit.

HTC CORPORATION and HTC AMERICA, INC. v. NFC TECHNOLOGY, LLC, IPR2014-01198
Paper 41: Order Granting-in-Part Petitioner’s Motion to Strike
Dated: November 6, 2015
Patents: 6,700,551
Before: James B. Arpin, Neil T. Powell, and Bart A. Gestenblith
Written by: Arpin