Takeaway: Cross examination of affidavit testimony obtained during a prior proceeding that is relied upon in support of a petition is authorized under the routine discovery rule and does not require a motion for additional discovery showing good cause. Moreover, it is the petitioner’s burden to produce such a witness for cross examination.

In its Order, the Board authorized Patent Owner to cross examine Petitioner’s witness. Patent Owner had contacted the Board seeking a discovery ruling to allow cross examination of a witness Petitioner had relied upon in showing that a certain reference qualifies as prior art. Petitioner argued that cross examination is not permitted per the routine discovery rule 37 C.F.R. § 42.51(b)(1) and further argued that the witness was unavailable. The Board authorized cross examination and determined that Petitioner—rather than Patent Owner—is responsible for producing the witness for cross examination.

Cross examination of affidavit testimony is authorized under the routine discovery rule. 37 C.F.R. § 42.51(b)(1). Petitioner, however, argued that “cross examination of a witness whose testimony was obtained during a prior proceeding does not fall under the routine discovery rule, but rather falls under the rule for additional discovery.” Thus, Petitioner argued that Patent Owner “would need to file a motion for additional discovery, showing good cause why the cross examination” is needed.

The Board disagreed:

Here, Petitioner relies on the prior Kawashima testimonial evidence in support of its Petitions. It is a pivotal part of Petitioner’s challenges based on TSE. Petitioner relies solely on the Kawashima testimony to show that TSE was publically available, and thus constitutes prior art. Based on the facts of these cases, we determine that it is Petitioner’s responsibility to secure the availability of Mr. Kawashima. Patent Owner is authorized to cross examine Mr. Kawashima. To the Extent that Petitioner is unable to produce Mr. Kawashima for cross examination, we will consider his unavailability in weighing his original testimony in our Final Written Decisions.

IBG LLC, et al. v. Trading Techs. Int’l, Inc., CBM2015-00179, -00181, -00182
Paper 39: Order on Conduct of the Proceeding
Dated: April 15, 2016
Patents: 7,533,056 B2; 7,676,411 B2; 6,772,132 B1
Before: Sally C. Medley, Meredith C. Petravick, and Jeremy M. Plenzler
Written by: Medley