Takeaway: In order to present testimonial evidence with its preliminary response, the patent owner must show that it would be in the interests of justice and overcome the fact that petitioner would not have an opportunity to cross examine the declarant.

In its Order, the Board denied Patent Owner’s request to file new testimonial evidence under 37 C.F.R. § 42.107(c). The parties had a conference call with the Board to discuss Patent Owner’s request to submit the testimonial evidence. Pursuant to 37 C.F.R. § 42.107(c), a patent owner’s preliminary response “shall not present new testimony evidence beyond that already of record, except as authorized by the Board.” Generally, a patent owner submits testimonial evidence in its response after institution.

During the call, Patent Owner stated that Favrat is not prior art under 35 U.S.C. § 102(e) because it is not “by another,” and Patent Owner wanted to present testimonial evidence supporting that argument from one of the eight inventors identified on the face of the patent at issue. Patent Owner stated that this evidence is relevant because each of the grounds of unpatentability rely at least in part on Favrat. Petitioner stated that such testimony would not be in the interests of justice because it is only testimony from one of eight inventors and it would not be subject to cross examination. The Board agreed with Petitioner that the inclusion of this testimony is not in the interests of justice because the testimony would not be subject to cross examination at this time. The Board stated that if the evidence has the desired effect, then institution would be denied and Petitioner would not have an opportunity to cross examine the declarant.

Maxlinear, Inc. v. Cresta Technology Corporation, IPR2015-00594
Paper 8: Conduct of the Proceeding
Dated: June 4, 2015
Patent 7,265,792 B2
Before: Phillip J. Kauffman, Gregg I. Anderson, and Patrick M. Boucher
Written by: Kauffman