In its Order, the Board authorized Patent Owner to file a Motion for Observations on Cross Examination of Petitioner’s Expert, but only with respect to specific topics. In particular, Patent Owner was not authorized to file a motion for observations on topics concerning the proposed substitute claims, which could be addressed in Patent Owner’s Reply. The Board authorized a motion for observations limited to testimony concerning subject matter in Petitioner’s Reply to the Patent Owner Response.
In a prior teleconference concerning the scope of the deposition of Petitioner’s expert, the Board had authorized Patent Owner to cross examine the expert on a declaration made in support of Petitioner’s Opposition to Patent Owner’s Motion to Amend and a separate declaration in support of Petitioner’s Reply to the Patent Owner Response. Patent Owner was not authorized to cross examine the expert with respect to a declaration made in support of the Petition. After the deposition had concluded, the parties sought the Board’s guidance with respect to the filing and timing of motions for observation.
The Board first explained the two relevant discovery periods for Patent Owner: (1) the first occurring between the decision to institute and the filing of the patent owner response and motion to amend and (2) the second occurring between the petitioner’s reply to the patent owner’s response and the patent owner’s reply to petitioner’s opposition to the motion to amend.
In this proceeding, Patent Owner had not yet filed its last substantive paper in response to Petitioner’s Opposition to Motion to Amend. Therefore, the Board stated that Patent Owner could address the testimony of Petitioner’s expert concerning the substitute claims in the Patent Owner’s Reply rather than in a motion for observations.
However, Patent Owner had already filed its final substantive paper, the Patent Owner Response, in response to the challenges on which trial was instituted, but on which Petitioner’s expert had not been deposed prior to that filing. Therefore, the Board authorized Patent Owner to file a Motion for Observations on Cross Examination concerning Petitioner’s challenges to the claims. Noting Petitioner’s argument that Patent Owner’s deferral of the deposition until after filing the Patent Owner Response was an attempt to introduce new issues after the first discovery period had concluded, the Board exercised its discretion to limit the motion for observations to expert testimony concerning Petitioner’s Reply to the Patent Owner Response.
Respironics, Inc. v. Zoll Medical Corp., IPR2013-00322
Paper 26: Order Authorizing Filing of Motions for Observations on Cross Examination
Dated: May 7, 2014
Patent 6,681,003
Before: Bryan F. Moore, Brian J. McNamara, and Scott E. Kamholz
Written by: McNamara