The Board ordered briefing on the question of whether disputed questions in the deposition of Patent Owner’s Declarant sought information within the scope of cross-examination of the Declarant and whether the information is privileged and/or whether privilege was waived. During the deposition of Patent Owner’s Declarant, Patent Owner’s counsel instructed the Declarant not to answer questions regarding Declarant’s discussion with Patent Owner’s counsel, because that information was privileged. Petitioner argued that the information sought was relevant and within the scope of cross-examination, because the Declarant testified during the deposition that he had no personal knowledge of certain photographs discussed in his declaration, and that the photographs were provided to him by Patent Owner’s counsel. Petitioner believes this information is relevant to determining whether the statements by Declarant are admissible, and that the discussions between Declarant and Patent Owner’s counsel are not privileged and/or such privilege is waived.
The Board ruled that the information sought by Petitioner was not protected by attorney-client privilege, but further consideration was needed on the question of work product and whether the information is within the scope of cross-examination. The Board also ordered that Petitioner may ask Declarant to identify any facts, data, and assumptions provided by Patent Owner’s counsel, and to finish the deposition. The Board also cautioned Patent Owner that, to the extent the instructions not to answer are determined to have been improper, Patent Owner is subject to the risk that another deposition would be ordered.

Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR 2013-00358
Paper 52: Order on Conduct of the Proceeding
Dated: March 20, 2014
Patent 8,286,561 B2
Before: Justin T. Arbes, Georgianna W. Braden, and Miriam L. Quinn
Written by: Arbes