Takeaway: A party may compel the deposition of a declarant for cross-examination purposes in the case where the declarant’s testimony is not limited to authentication of the documents in question.

In its Order, the Board granted Patent Owner’s Request to Compel the Depositions of Declarants Ms. Paula Carey and Ms. Elizabeth Sheehan. At the same time, the Board permitted Petitioner to attend each deposition and conduct re-direct examination.

Patent Owner had requested to compel the depositions of two non-party witnesses, Ms. Carey and Ms. Sheehan, who had submitted declarations as to the alleged public availability of two non-patent references being relied on by Petitioner. The Carey and Sheehan Declarations were presented by Petitioner in support of Petitioner’s assertion that the non-patent references qualify as prior art against the ’195 patent. It was Petitioner’s particular contention that the two non-patent references constituted prior art because they were publicly available before the effective filing date of the ʼ195 patent.

Ms. Carey was employed as a librarian at Boston University. Ms. Sheehan was a permissions coordinator for a publishing group in New York City. Neither of these two declarants was employed by either party.

Petitioner asserted that although the two declarants would agree to cooperate in whatever manner is appropriate to make them available, they were not willing to voluntarily appear for a deposition. According to Petitioner, Patent Owner’s requested cross-examination of Ms. Carey and Ms. Sheehan was not necessary because their testimony was limited to authentication of the documents in question. Patent Owner disagreed, and thus requested the Board to authorize subpoenas that would compel the testimony of both declarants so that Patent Owner could cross-examine them with respect to their declarations.

The Board concluded that Patent Owner’s request was reasonable under the circumstances. In particular, the Board agreed with Patent Owner that the declarations are not limited to authentication of the references, and thus allowed Patent Owner the opportunity to cross-examine the declarants on their testimony. Among other things, it was Patent Owner’s position that the publication date for the Wu reference indicated in the Carey Declaration was not supported by the facts.

Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC, IPR2014-00553
Paper 28: Order
Dated: April 8, 2015
Patent: 6,754,195 B2
Before: Thomas L. Giannetti, James A. Tartal, and Patrick M. Boucher
Written by: Giannetti