In Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., the Patent Trial and Appeal Board (PTAB) denied a patent owner’s request for additional discovery that sought the deposition of a declarant whose testimony was relied on by the petitioner in its Reply to the Patent Owner’s Response.  IPR2013-00576, Paper 36 (Sept. 5, 2014).

Citing the fifth Garmin factor, the Board declined to compel the petitioner to produce a witness “who is not under Petitioner’s control” and “who may reside in Japan.”

The news was not all good for the petitioner, however.  The Board went on to state that if the petitioner did not produce the witness for “cross-examination” (which presumably could be satisfied by either a deposition or perhaps live cross-examination at the oral hearing), the Board would give the witness’s declaration “little to no weight as Patent Owner has not been offered a fair opportunity to challenge his testimony.”

Notably, the Board cited both the Federal Rules of Evidence (Rules 801 and 802) and the Office Trial Practice Guide in support of this statement.

As this decision shows, a party to a PTAB trial should only rely in its briefing on the testimony of witnesses that the party is able to make available for cross-examination by the opposing party.