Takeaway: The deposition of a petitioner’s expert who provides testimony with the petitioner’s reply should take place within a month of the filing of the reply, and thus the deposition notice should be sent at least ten business days prior to the end of the one-month period. In this case, the Board allowed a deposition where notice was provided only two business days before the end of the one-month period, because, among other reasons, Due Date 3 (Patent Owner’s Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend) had been eliminated.

In its Order, the Board denied Petitioner’s request to quash the deposition notices of Petitioner’s expert and directed the deposition to proceed on one of the earliest dates on which the expert is available for a deposition. Petitioner objected to the timeliness of the notices, based on the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48757 (Aug. 14, 2012), which shows a patent owner’s discovery period following the filing date of the petitioner’s reply to patent owner’s response is one month, ending with the patent owner’s reply to petitioner’s opposition to patent owner’s motion to amend. Patent Owner contended that its notice was timely because it was served within one month of Petitioner’s Reply, and that because there is no motion to amend, there is no opposition or reply, thus eliminating Due Date 3.

Although the Board agreed that Patent Owner did not meet the timeline in the Practice Guide, it determined that the deposition should go forward, because Due Date 3 had been eliminated and Petitioner could not point to any significant prejudice that could not be addressed by adjusting Due Dates 4, 5, and 6 and permitting Petitioner to respond to Patent Owner’s motions for observations.

Microsoft Corp. v. Enfish, LLC, IPR 2013-00559, IPR2013-00560, IPR2013-00561, IPR2013-00562, IPR2013-00563
Paper 42: Order on Conduct of the Proceeding
Dated: October 10, 2014
Patents 6,163,775 and 6,151,604
Before: Thomas L. Giannetti, Bryan F. Moore, Scott A. Daniels, and Barbara A. Parvis
Written by: Giannetti