In its Order, the Board denied Patent Owner’s request to file a motion for observation on the cross-examination testimony of Patent Owner’s declarants. Patent Owner argued that Petitioner, in its reply, mischaracterized the testimony of Patent Owner’s witnesses. For example, the Patent Owner argued that Petitioner summarized the testimony incorrectly and cited portions of the deposition transcripts while failing to cite other contradictory portions. Because Patent Owner does not have the ability to respond to Petitioner’s Reply, Patent Owner wanted to file observations of its own witnesses to highlight certain portions of the transcripts.
The Office Patent Trial Practice Guide states that “The party taking the cross-examination files the observations. The opposing party may file a response to an observation. The opposing party may not file observations without express prior authorization.” 77Fed. Reg. 48,756, 48,767-68 (Aug. 14, 2012). The Board was not persuaded that a motion by Patent Owner to file observations on cross-examination on Patent Owner’s witnesses was appropriate.
Patent Owner also inquired during the telephone conference whether it could raise the alleged mischaracterizations in Petitioner’s Reply at the oral hearing. The oral hearing is not an opportunity for a party to expand upon the testimony of its witnesses in a manner not already presented. However, the Board was persuaded that under these circumstances, Patent Owner should be allowed to cite at the hearing other portions of witnesses’ testimony, but only to demonstrate that Petitioner’s characterization of the witnesses’ testimony is incorrect.
Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358
Paper 77: Order on the Conduct of the Proceeding
Dated: May 16, 2014
Patent: 8,286,561 B2
Before: Justin T. Arbes, Philip J. Hoffmann, and Georgianna W. Braden
Written by: Arbes