Decision on Petitioner’s Request for Declaration IPR2014-00041, 43, 51, 54, 55

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Takeaway: In the case where a declarant has reviewed and authorized application of his signature to a single omnibus declaration, but the omnibus declaration was divided into individual declarations that declarant did not review prior to filing, production of the single omnibus declaration and cross-examination of the declarant on the omnibus declaration are warranted.  

In the Decision, the Board addressed the situation where a single “omnibus” declaration was prepared for Patent Owner’s declarant in the five instant proceedings, but where in the end, five individual, non-identical declarations were submitted in the instant proceedings, respectively, rather than the single omnibus declaration.  In other words, the single omnibus declaration was divided up into five individual declarations that were filed in the five proceedings, respectively.  The five individual declarations were not identical to each other in that they had different numbers of paragraphs, with someone other than the Patent Owner’s declarant having decided which paragraphs would be included in each of the five declarations as filed.

In particular, during his deposition, Patent Owner’s declarant testified that he had reviewed and authorized his signature to be applied to the single omnibus declaration.  However, Patent Owner’s declarant had not reviewed any of the individual declarations actually filed in any of the five instant proceedings until the time of preparation for his deposition, i.e., until after the individual declarations had already been filed.

Thus, Patent Owner’s declarant had not reviewed any of the actual declarations that had been filed in each of the five instant proceedings, having left the decision regarding “whether to divide the single document that the reviewed into five separate declarations ‘up to the judgment of the attorneys.’”  Patent Owner’s declarant also had not specifically authorized any of the modifications to the sentences or paragraphs in the single omnibus declaration that were made after his review.  Instead, Patent Owner’s declarant had merely authorized that his signature could be applied to the substance of the material to which he was testifying.

Following these occurrences, Petitioner asked for discovery of the single omnibus declaration.  According to Petitioner, Patent Owner’s declarant “testified during his deposition that, while he authorized his signature on the omnibus declaration, he had not seen the five declarations that were actually filed in each of the five cases until preparing for his deposition.”  The Board then authorized briefing on these issues by the parties, by which Petitioner asked that the Board compel production of the omnibus declaration and allow Petitioner to cross-examine Patent Owner’s declarant on the differences between the omnibus declaration and the five filed declarations; and by which Patent Owner opposed Petitioner’s request because the omnibus declaration was a draft document protected from having to be disclosed by the work product doctrine.

Patent Owner’s Opposition was accompanied by another declaration in which Patent Owner’s declarant provided additional testimony as to his authorization to file his testimony as either a single declaration or broken up into five separate declarations.  In these materials, Patent Owner’s declarant further testified that the declarations do not contain substantively different testimony than what he had authorized.

The Board’s analysis began by noting that “Patent Owner’s declarant did not review the actual declarations that were filed in each of the five cases” and that, instead, “he reviewed one document and authorized his signature to be applied to that single document.”  The Board went on to note Petitioner’s strong interest in discovering whatever changes were made between the authorized omnibus declaration and the five filed declarations because such changes are relevant to the credibility of the declarations; that Patent Owner cannot assert that the omnibus declaration is privileged but at the same time allow the declarant to revisit the declaration and testify as to the differences between the omnibus declaration and the five filed declarations; that unchallenged declaration testimony provided in support of Patent Owner’s opposition brief cannot stand on its own; and that Petitioner is entitled to explore the veracity and scope of the assertions by Patent Owner’s declarant that the five filed declarations do not contain any “substantively different testimony.”

In view of these points, the Board ordered that Patent Owner must produce the omnibus declaration to Petitioner; that Petitioner is entitled to cross-examine Patent Owner’s declarant on the omnibus declaration for a limited period of up to three hours; and that, unless the parties agree otherwise, Patent Owner is responsible for the costs of the reconvened deposition.

GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, IPR2014-00043, IPR2014-00051, IPR2014-00054, IPR2014-00055
Paper 52 (IPR2014-00041), Paper 50 (IPR2014-00043), Paper 50 (IPR2014-00051), Paper 49 (IPR2014-00054), Paper 43 (IPR2014-00055):

Decision Dated: July 21, 2014

Patent 6,945,013 B2 (IPR2014-00041)
Patent 6,475,435 B1 (IPR2014-00043) Patent 6,209,591 B1 (IPR2014-00051) Patent 6,481,468 B1 (IPR2014-00054) Patent 6,536,188 B1 (IPR2014-00055)
Before: Rama G. Elluru, Beverly M. Bunting, and Carl M. DeFranco

Written by: Elluru