Declaratory Testimony from File History is “Affidavit Testimony” Which Requires Deposition

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Most declaration testimony in an inter partes review proceeding is newly developed as part of the IPR.  On occasion, however, parties to an IPR have used previously generated declarations in support their positions.  In Ikaria, Inc. v. GeNO LLC, IPR2013-00253, the PTAB considered the issue of whether, when a Patent Owner includes, in its Response, an expert declaration that was submitted during prosecution of the challenged patent, Petitioner is entitled to cross-examine the expert.

In Ikaria, Petitioner argued that, pursuant to 37 CFR § 42.51(b)(1)(ii), the testimony of an expert cited in a Patent Owner’s response was “affidavit testimony.” Therefore, the Rules required cross examination of the expert as part of routine discovery.  Patent Owner disagreed, arguing that the declaration was not prepared for the purposes of this proceeding and, as such, cross-examination was not required.  The Board disagreed, finding that cross-examination was required.

Further complicating matters was the fact that the expert was unable to be deposed due to medical issues. Since a deposition was unable to be arranged to comply with the Rules, Patent Owner filed a motion to expunge the expert declaration from the record.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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