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Failure to Make A Third Party Witness Available May Result In The Testimony Being Ignored

In the Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., the Patent Owner moved for additional discovery to depose a third party witness whose declarations were relied upon by Petitioner in its Reply to the Patent Owner’s Response. The witness originally submitted declarations in reexamination proceedings involving a patent related to the challenged patent.

In its motion, the Patent Owner argued that the Garmin factors each strongly support granting the deposition. In particular, the Patent Owner argued that ” (Factor 1) there is credible, concrete evidence (more than a possibility and mere allegation) that the deposition of [the witness] will provide significant evidence regarding the non-obviousness of and teachings away from the invention in the [challenged] patent;” that (Factor 2) the deposition does not seek Petitioner’s litigation positions or their underlying basis;” that (Factor 3) the “Patent Owner has no ability to obtain information from [the witness] by other means;” that “(Factor 4) the deposition will follow common deposition protocols and easily understandable instructions;” and, that “(Factor 5) the deposition only requires production of [the witness] and is not overly burdensome.

In its opposition, the Petitioner responded that the Patent Owner’s requested discovery is not limited in scope. In addition, the Petitioner argued that the “Patent Owner has not provided any actual evidence, much less a threshold level of evidence, that is already in its possession to show, beyond speculation, that something useful would be uncovered in [witness’] deposition. For example, it has not provided any papers written by [the witness] that would contradict the positions taken in the declaration.” The Petitioner also argued that there was no evidence that the Patent Owner had tried to obtain the information by other means or shown that sources of information other than the witness’ testimony are not be available. Finally, the Petitioner argued that “[it] does not control [the witness]. [The witness] is not a witness of Petitioner, nor is he an employee of Petitioner. [The witness] is a third party. As such, Petitioner cannot “produce” [the witness] for a deposition.”

The Petitioner went on to conclude:

The Declaration of [the witness] is not “testimony” for the purposes of this inter partes review under 37 C.F.R. § 42.53, as it was not prepared for the purposes of this inter partes review. The declaration is a piece of documentary evidence no different than any other published third party paper or article submitted as an exhibit. Patent Owner has presented objections to the declaration. Patent Owner is entitled to file a motion to strike the exhibit. The Board is experienced in weighing evidence and will no doubt consider any motion to strike, and afford the declaration the appropriate weight in rendering its decision in the present inter partes review.

In denying the requested discovery, the Board explained that the Patent Owner failed to show the requested discovery is “necessary in the interest of justice:”

Although Patent Owner’s position has merit in relation to certain Garmin factors, we will not grant the requested additional discovery because we are not persuaded it is “necessary in the interest of justice” under the circumstances of this case. 35 U.S.C. § 316(a)(5); see also 37 C.F.R. § 42.51(b)(2). Particularly in view of the fifth factor (“Requests Not Overly Burdensome to Answer”) outlined in Garmin, we will not compel Petitioner to provide [the witness] for cross-examination in a deposition. We will not compel Petitioner to produce a witness who is not under Petitioner’s control, who may reside in Japan, especially where such action may require a court subpoena and/or invoke the Hague Convention.

While the Board denied the Patent Owner the requested discovery, it also warned the Petitioner that its failure to make the witness available for cross-examination would have consequences:

We note, however, that to the extent Petitioner relies on [the witness’] previously prepared Declaration (Ex. 1076), we will take into consideration whether Patent Owner has had an opportunity to cross-examine [the witness]. Although we will not compel Petitioner to produce the witness, if Petitioner does not produce [the witness] for cross-examination, we will give that Declaration little to no weight as Patent Owner has not been offered a fair opportunity to challenge his testimony. See, e.g., Fed. R. Evid. 801 and 802. “[A] party presenting a witness’s testimony by affidavit should arrange to make the witness available for cross-examination.” Office Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (August 14, 2012).


Although the Board denied the Patent Owner’s requested discovery, particularly in view of the fact that it involved a foreign witness over whom the Petitioner had no control, it rejected the Petitioner’s position that relying on witness testimony in the form of a declaration submitted in a different proceeding does not require it to make the witness available for cross-examination.

Macronix International Co., Ltd. et al. v. Spansion LLC, Case IPR2014-00898, Paper 36 (Bonilla, A.P.J.).

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. The authors represent inventors, patent owners and technology companies in patent licensing and litigation in U.S. District Courts and in the United States Patent and Trademark Office, including numerous IPRs currently pending before the PTAB. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Greg Cordrey at 949.623.7236 or