Takeaway: Cross-examination of third-party witnesses should be narrowly tailored to minimize the burden on the third party.

In its Decision, the Board granted Petitioner’s request to file supplemental evidence as supplemental information and granted Patent Owner’s request to cross-examine a third-party declarant.

The supplemental evidence, which had been served on Patent Owner, included a Declaration of Mr. Richard Reader, a Manufacturing and Distribution Senior Director at Oracle (a third party to the trial) and related exhibits containing screenshots of Oracle’s computer system for software and document shipments.

The Board previously instituted the trial based on at least an asserted ground of unpatentabilty over an Oracle Application Developer’s Guide. The Guide included “a date of ‘September 2000’ on the first page and a copyright on the second page, as well as a part number (Part No. A86030-01) and the Oracle trademark.” Based on the evidence submitted with the Petition, the Board determined that Petitioner had made a sufficient showing that the Guide qualifies as a printed publication, for purposes of instituting trial.

Patent Owner then served objections alleging that the Guide “had not been shown to be a prior art printed publication or authenticated, and it is inadmissible hearsay.” In response, Petitioner seeks to submit additional evidence demonstrating the date of first public availability of the Guide. Petitioner obtained the Declaration in response to a subpoena to Oracle, which was previously authorized by the Board, and timely served the declaration on Patent Owner as supplemental evidence. Petitioner then sought authorization to file the Declaration as supplemental information. Patent Owner opposed the request on the basis of alleged prejudice, contending that it “need sufficient time to formulate a strategy for responding, in its Patent Owner Response” and that it had “not had an opportunity to cross-examine Mr. Reader.”

The Board began by analyzing Petitioner’s request to submit supplemental information. Because Petitioner is the moving party, it bears the burden of proving that it is entitled to the requested relief. “A party may file a motion to submit supplemental information if the request is made within one month of the date the trial was instituted and the supplemental information is relevant to a claim for which trial has been instituted. 37 C.F.R. § 42.123(a).” However, in this case, Petitioner’s request is more than one month after the date that trial was instituted. Accordingly, the Board looked “to 37 C.F.R. § 42.123(b), which requires a showing of why the supplemental information reasonably could not have been obtained earlier, as well as showing that consideration of the supplemental information would be in the interests-of-justice.” The Board was persuaded that Petitioner met this standard, as the Board had previously concluded that Petitioner had shown why the information was relevant and could not be obtained without a subpoena. The Board also determined that Petitioner had shown sufficiently that submitting the evidence is in the interests-of-justice because it “responds to an objection by Patent Owner regarding the public availability of a prior art reference.” The Board was not persuaded by Patent Owner’s contention that it was prejudiced because, inter alia, Petitioner filed the request on the due date for service of supplemental evidence and Patent Owner may file a motion to exclude the Guide at a later date if it still is of the opinion that it is inadmissible.

Turning to Patent Owner’s objection that it had not conducted a cross-examination of the declarant, the Board treated this argument as a request to cross-examine. The Board granted the request, “but only regarding the subject matter of his direct testimony, which in this case appears to be extremely narrow” (see Ex. 1038 (three page declaration of Mr. Reader)). However, the Board further stated that it was “providing the opportunity for Patent Owner to cross-examine Mr. Reader, but only if Oracle Corporation agrees” and set a briefing schedule for a motion for authorization to compel discovery if Oracle Corporation did not agree to Patent Owner’s cross-examination. The Board encouraged Patent Owner to minimize the burden to Oracle Corporation, limit the deposition to one hour, and to consider a telephonic deposition or a deposition by narrowly-tailored written questions. It then cautioned “Patent Owner that a request that is not tailored narrowly will not be granted, in part because thus far Patent Owner has not provided persuasive evidence showing a reason to doubt the date on the Oracle Developer’s Guide.”

International Business Machines Corp. v. Intellectual Ventures I LLC, IPR2014-01385
Paper 19: Decision Granting Petitioner’s Request to File Supplemental Evidence as Supplemental Information and Granting Patent Owner’s Request to Cross-Examine Third-Party Declarant
Dated: May 4, 2015
Before: Joni Y. Chang, Jennifer S. Bisk, and Barbara A. Parvis
Written by: Parvis