If you rely in an IPR on a declaration submitted during prosecution, the PTAB may give it little or no weight if your opponent cannot cross-examine the declarant.

In Praxair Distribution, Inc. v. INO Therapeutics LLC, the PTAB instituted inter partes review of U.S. Patent No. 8,846,112, directed to methods of providing nitric oxide gas for treating newborn children suffering from hypoxia.

In response, the Patent Owner relied not only on a supporting expert declaration, but also on three declarations submitted during prosecution of the ’112 patent.

The Patent Owner resisted the Petitioner’s request to depose the prosecution declarants. The Petitioner requested authorization to seek leave to take the depositions, because the Patent Owner substantively relied on the declarations. The Patent Owner opposed, primarily because the declarations were not prepared for the IPR.

“The panel warned [that] . . . ‘Patent Owner may wish to reconsider its position regarding the cross-examination of [the declarants].’”

The panel denied the Petitioner’s request because it did not satisfy the “interests of justice” standard for additional discovery. The panel warned, however, that “depending on the context in which Patent Owner relies on those declarations, the panel may accord the testimony little or no weight as petitioner has not been offered a fair opportunity to challenge the testimony,” and “[t]hus, while we deny Petitioner’s Motion for Additional Discovery, Patent Owner may wish to reconsider its position regarding the cross-examination of [the declarants].” The panel did not elaborate on why it was not persuaded, or on any “context” in which the Patent Owner might successfully rely on the declarations without accompanying depositions. But the Petitioner obtained a favorable result even though its request to file a motion was denied.

The panel relied on Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., Case IPR2013-00576 (PTAB Sept. 5, 2014) (Paper 36), where a similar approach was taken. There, the PTAB denied a Patent Owner’s motion to depose the author of a declaration originally submitted in reexamination, and on which the Petitioner relied in its reply. The PTAB said it was not persuaded that the requested deposition was “necessary in the interest of justice,” particularly in view of the fifth Garmin factor (“Requests Not Overly Burdensome to Answer”), as the witness was not under the Petitioner’s control and might have resided in Japan, such that either a subpoena or invocation of the Hague Convention might have been required to compel appearance. The panel warned, however, that “if Petitioner does not produce [the declarant] for cross-examination, we will give that Declaration little to no weight as Patent Owner has not been offered a fair opportunity to challenge his testimony.”

In view of these decisions, parties considering relying on a prosecution declaration should be mindful that if an opponent has no opportunity to cross-examine the declarant, and depending on the “context” in which the declaration is relied on, the PTAB may give it little or no weight. Parties facing such declarations should consider requesting additional discovery to conduct narrowly-tailored depositions of the declarants, and arguing that the declarations should not be given any weight if the requests are denied.