Cross-Examination is Not Limited to Documents Cited in Declaration

In Medtronic, Inc. v. Endotach LLC, IPR2014-00100, Paper 32 (August 28, 2014), the petioner filed a Supplemental Notice of Deposition of patent owner’s witness, indicating that its cross-examination of the witness “may rely on,” among other things, a prior declaration by the witness filed in district court and three U.S. patents.  The patent owner requested a conference with the Board because such cross- examination necessarily would be outside the scope of the direct testimony set forth in his IPR Declaration.

The Board disagreed with the Patent Owner, noting:

We contemplate multiple scenarios in which other documents may be used for cross-examining a witness, while staying within the scope of his or her direct testimony. The fact that a document is not cited or discussed in a declaration is not dispositive for purposes of enforcing § 42.53(d)(5)(ii).

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.