Takeaway: Authorization to seek a subpoena to compel testimony by an expert was denied where the request was made too close to the deadline for submitting any supplemental evidence arising from such compelled testimony.

In its Order, the Board denied Patent Owner’s request for authorization to seek a subpoena and its request for an extension of the deadline to submit supplemental evidence. Patent Owner requested a conference call to request authorization to seek a subpoena from a district court and for an extension of the deadline to submit supplemental evidence.

The Board explained that Petitioner has the right to object to admissibility of any evidence relied upon by Patent Owner in its Response under 37 C.F.R. § 42.64(b)(1); Patent Owner may respond by serving supplemental evidence within 10 business days of the objection under 37 C.F.R. § 42.64(b)(2); and the Board has discretion to extend discovery deadlines upon a showing of good cause under 37 C.F.R. § 42.5(c). For compelled testimony and production of documents, the Board requires the party to first obtain authorization from the Board before seeking a subpoena from a district court; otherwise, the compelled evidence will not be admitted in the proceeding.

Patent Owner had included one page of a transcript of a deposition of an expert taken in related IPRs filed by a different petitioner. Petitioner served an objection to the transcript claiming that the testimony was hearsay. Patent Owner wanted to move for a subpoena in district court to compel the expert to testify in the instant IPRs to verify the answers given in the transcript.

Petitioner opposed the requests. Specifically, Petitioner argued that Patent Owner made no attempt to obtain the authorization to move for a subpoena during the discovery period, and that discovery was now closed in the case. The Board denied both of Patent Owner’s requests because the issue of admissibility and the delay involved in seeking a deposition of the expert to cure the hearsay issue was foreseeable, and thus there was no good cause to extend the deadline for supplemental evidence. At least because it was too late to submit the evidence, the Board also denied the request to seek a subpoena to depose the expert.

The Board did note that Petitioner has not filed a motion to exclude the evidence of the transcript, and thus the Board has not considered whether the transcript is admissible yet.

Smart Modular Technologies Inc. v. Netlist, Inc., IPR2014-01372, IPR2014-01374
Paper 24: Order on Conduct of the Proceedings
Dated: July 7, 2015
Patent: 8,001,434; 8,359,501
Before: Linda M. Gaudette, Bryan F. Moore, Matthew R. Clements, and Peter P. Chen
Written by: Moore