No Right to Cross-Examine a Declarant Not Under the Proponent’s Control

In Mexichem Amanco Holding S.A. de C.V. v.Honeywell International, Inc., IPR2013-00576, Paper 36 (September 5, 2014), the Board denied patent owner’s request for additional discovery — the deposition of Dr. Takashi Shibanuma, who provided previously prepared testimony relied on by Petitioner in its Reply to Patent Owner’s Response.  This previously prepared testimony was a declaration originally submitted in reexaminations of a different, but related, patent.  The Board denied the additional discovery relying on the Fifth Garmin Factor — that the request is not overly burdensome to answer.  The Board said that it wold not compel petitioner to provide Dr. Shibanuma for cross-examination in a deposition, noting that the witness was not under Petitioner’s control, and may reside in Japan, and that such such action may require a court subpoena and/or invoke the Hague Convention.


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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.