Takeaway: The Board may authorize application for a subpoena to compel deposition testimony of a third party declarant where the declarant’s personal knowledge is relevant to the public availability of a prior art reference.

In its Order, the Board authorized Patent Owner to apply for a subpoena from the district court to obtain testimony from third party Oracle Corporation. After Patent Owner filed its Motion for Authorization to Compel Testimony (Motion to Compel), counsel for Oracle contacted the Board to request a call concerning the scope of Patent Owner’s request. During the call among the parties, Oracle, and the Board, Petitioner indicated that it would not oppose the request.

Trial was instituted, in part, based upon an Oracle Developer’s Guide to which Patent Owner objected to on authentication and hearsay grounds. In response to Patent Owner’s objections, Petitioner sought to compel discovery from Oracle limited to the particular document, which the Board authorized. Rather than attending a deposition, Oracle instead provided a declaration from an employee, Mr. Richard Reader, that included related exhibits with screenshots of Oracle’s system for software and document shipments. Petitioner served the declaration on Patent Owner as supplemental evidence and requested filing the declaration as supplemental information, which Patent Owner opposed because it did not have an opportunity for cross-examination.

The Board authorized the filing of the declaration as supplemental information and further ordered that if Oracle would not agree to Patent Owner’s cross-examination, Patent Owner would be authorized to file the instant Motion pursuant to 37 C.F.R. § 42.52(a).

Patent Owner’s discovery request, Exhibit 2001, was a single page indicating that the deposition topic is “[t]he subject matter set forth in Mr. Reader’s declaration.” Patent Owner also indicated that it was willing to be bound by the topic that was previously submitted by Petitioner in its request – “[t]he date of first public availability of [the Oracle Developer’s Guide].” The Board noted that the discovery request sought testimony regarding the declarant’s personal knowledge and that Patent Owner would adhere to the constraints suggested previously by the Board.

Oracle asserted that the request was not “tailored sufficiently narrowly” based upon Patent Owner’s statement that “there can be no reasonable doubt that Mr. Reader possesses additional knowledge—not stated in his declaration—relevant to whether Exhibit 1008 was sufficiently accessible to the relevant public to qualify as a prior art printed publication.” Oracle also asserted that preparing Mr. Reader would be overly burdensome.

The Board noted that it had already permitted testimony and cross-examination by Patent Owner of the declarant, and therefore, turned to the concerns raised by Oracle. With respect to whether the request was narrowly tailored, the Board noted that Oracle had already supplied a declaration regarding the same topic. Regarding the declarant’s knowledge and whether he will “likely” testify regarding public accessibility of the reference, the Board indicated that at the stage of the proceeding and without an opposition from Oracle, it could not determine what testimony may be provided. The Board also noted that it was merely providing Patent Owner with the “opportunity to apply for a subpoena,” and that Oracle could take advantage of any rights related to that subpoena.

Finally, the Board disagreed with Patent Owner’s contention that “declaration testimony is normally subject to cross-examination as part of routine discovery,” noting that Mr. Reader is an employee of third party Oracle and that it had not been shown that Mr. Reader received compensation from Petitioner.

Accordingly, Patent Owner was authorized to apply for a subpoena with the district court, with the scope of the subpoena limited to the topic identified in Exhibit 2001, “[t]he subject matter set forth in Mr. Reader’s declaration.” The Board also noted that the topic was “a sub-set of and limited to Petitioner’s topic, as specified in Exhibit 1015 i.e., ‘[t]he date of first public availability of [the Oracle Developer’s Guide],’” and that the deposition is of the declarant’s personal knowledge.

International Business Machines Corp. v. Intellectual Ventures I LLC, IPR2014-01385
Paper 26: Order Granting Patent Owner’s Motion for Authorization to Compel Testimony
Dated: May 27, 2015
Patent: 7,984,081 B1
Before: Joni Y. Chang, Jennifer S. Bisk, and Barbara A. Parvis
Written by: Parvis