On January 10, 2017, the Patent Trial and Appeal Board (the “Board”) ruled that Petitioner’s inability to depose, and therefore cross-examine, Patent Owner’s expert could warrant striking the expert’s declaration.

On January 21, 2016, 1964 Ears, LLC (“Petitioner”) filed a petition for inter partes review for U.S. Patent No. 8,897,463, which was instituted on July 20, 2016. Jerry Harvey Audio Holding, LLC (“Patent Owner”) filed its Patent Owner Response on November 3, 2016, including an expert declaration from Jerry Harvey, the Patent Owner. Petitioner’s Reply is due by February 3, 2017. In view of this schedule, the parties scheduled Mr. Harvey’s deposition for January 11, 2017. Petitioner was advised, however, one week prior to the scheduled deposition, that Mr. Harvey was no longer available on that date and that he could not be made available before the deadline for Petitioner’s Reply.

Petitioner then sought, and the Board granted, leave to strike Mr. Harvey’s declaration. The Board explained, “given Petitioner’s inability to cross-examine Mr. Harvey prior to the due date for Petitioner’s Reply, the likely remedy would be to strike Mr. Harvey’s declaration. Patent Owner’s counsel indicated he understood the likelihood of that outcome, and that he had advised his client [the expert] of the likelihood of that outcome prior to the conference call. [Patent owner's counsel] nonetheless indicated that [the expert] was not available for deposition prior to the due date for Petitioner’s Reply, and that he was acting in accordance with [the expert's] instructions in that regard.” The Board further noted that the Patent Owner did not request an extension of time for Petitioner’s Reply or otherwise indicate that Mr. Harvey would be available for a deposition at some later date.

1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC, No. IPR2016-00494 (PTAB Jan. 10, 2017) [Lee, McNamara and Horvath]