In HTC Corp. v. NFC Tech., LLC, the PTAB granted the Petitioner’s motion to strike and expunge the declaration of the Patent Owner’s non-party witness, who refused to submit to cross-examination. IPR2014-01198, Paper 41 (Nov. 6, 2015).

The Patent Owner submitted a declaration of a non-party witness residing in France to support its alleged earlier invention date. Pursuant to the Board’s Rules and the Hague Convention, the Petitioner sought to cross-examine the witness in France, but he refused “for personal reasons” after initially indicating a willingness to be deposed, which resulted in a scheduling delay impacting the panel and parties.

The Board explained as “a guiding principle of routine discovery” that a party proffering a witness’s testimony must make that witness available for cross-examination. See 37 C.F.R. §§ 42.51-42.53; Office Patent Trial Practice Guide, 77 Fed. Reg. at 48761. Therefore, the Patent Owner was responsible for the availability of its chosen non-party declarant.

To the extent striking the declaration was not covered under its Rules governing routine discovery, the Board exercised its authority under 37 C.F.R. § 41.12 (a)-(b) to strike and expunge the declaration. Because the parties’ disagreement on the issue was not raised in this briefing, the Board did not decide the question of whether another vehicle to exclude the declaration was to challenge its admissibility as being hearsay due to the absence of cross-examination.

The Board denied the Petitioner’s request to strike portions of the Patent Owner’s Response, instead indicating the Board gave no weight to reliance on the declaration.

This decision shows that the responsibility for a declarant’s refusal to be cross-examined indeed rests with the proffering party, even if the declarant is not employed by the party. Thus, a party should be mindful of that responsibility in choosing and relying on a non-party declarant.