In Valeo, Inc. v. Magna Electronics, Inc., the PTAB declined to grant the Patent Owner’s request to order a deposition of Petitioner’s declarant, stating that the Patent Owner was not prevented from deposing the declarant earlier merely because the declarant’s deposition was not of record. IPR2014-00221 & IPR2014-00227, Paper 27 (Nov. 13, 2014).

The declaration was not of record because the Petitioner did not file the declaration with the PTAB, although the Petitioner served the declaration on the Patent Owner earlier in the proceeding in response to the Patent Owner’s objection challenging the authenticity of a publication.

The Patent Owner ultimately decided to file a Motion to Exclude the publication that was the subject of the declaration. Assuming the Petitioner would include the declaration as an exhibit in its Opposition to the motion, the Patent Owner sought an order from the Board that it was entitled to depose the declarant. The Patent Owner told the Board during a teleconference that it had not yet deposed the declarant because it believed it was not entitled to do so until the Petitioner relied upon the declaration by entering it in the record.

In declining to order Petitioner to make the declarant available for deposition “at this stage of the proceeding,” the PTAB noted that the Patent Owner had possessed the declaration “for some time” and that cross-examination of an opposing party’s declarant was available as routine discovery per 37 C.F.R. § 42.51(b)(1)(ii) and the Office Patent Trial Practice Guide, regardless of whether Petitioner had filed the declaration.

As this decision shows, parties to PTAB proceedings should seek to depose all of the opposing party’s declarants during the period of routine discovery and not wait until later in the proceeding—even for declarations that are not yet of record.