/>iTakeaway: If a party wants to rely on the declaration of an expert residing outside of the United States, the Board may require that party to arrange for the expert to be deposed in the United States or withdraw the expert’s declaration from the proceeding.
In its Order, the Board ordered Patent Owner to make its expert Dr. Bordeauducq available for cross-examination in the United States at a time acceptable to both parties. Alternatively, the Board gave Patent Owner the option of requesting the withdrawal of Dr. Bordeauducq’s declaration from the proceeding.
Patent Owner had insisted on having Dr. Bordeauducq’s cross-examination conducted via video or telephonic deposition, rather than having Dr. Bordeauducq deposed in person somewhere within the United States. Patent Owner’s position in this respect was that “Dr. Bordeauducq resides in Hong Kong and the expenses of Petitioner’s travel to Hong Kong or Dr. Bordeauducq’s travel to the United States were prohibitive given the size of Patent Owner, especially in relation to Petitioner.” Additionally, it was Patent Owner’s position that the Federal Rules of Civil Procedure (FRCP) Rule 30(b)(4) provides for such remote depositions.
The Board indicated that it was not aware of any authority stating that the FRCP applies to its proceedings. And even if this was the case, the Board said that the taking of any testimony outside of the United States under 37 C.F.R. § 42.53(b)(3) could only occur upon agreement of the parties or if the Board specifically directs. Ultimately, the Board was not persuaded that Patent Owner had shown that this situation was a case where the Board should order that the deposition could be conducted by remote means over Petitioner’s objections. Therefore, the Board concluded that Dr. Bordeauducq must be made available for cross-examination in the United States for cross-examination or, alternatively, Patent Owner would need to request withdrawal of Dr. Bordeauducq’s declaration from consideration.
Square, Inc. v. REM Holdings 3, LLC, IPR2014-00312
Paper 37: Order on Conduct of the Proceeding
Dated: December 9, 2014
Patent 8,584,946
Before: Denise M. Pothier, Jennifer S. Bisk, and Patrick R. Scanlon
Written by: Bisk
