Motion for Additional Discovery: Attacking Third Party Testimony

September 09, 2014

Dave Emery

Recently, in an Inter Partes Review proceeding, patent owner Honeywell International Inc., failed in its attempt to obtain additional discovery under 37 C.F.R. § 42.51(b)(2).  Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc. (IPR2013-00576, Paper No. 36, September 5, 2014).  However, the real outcome of the decision denying the request proved to be in the patent owner’s favor.  While denying the request for additional discovery based on a third party declaration prepared for another proceeding, the PTAB noted that the declaration will be afforded little or no weight because the patent owner did not have a fair opportunity to challenge the declaration testimony. (Paper No. 36 at p. 3).

The declaration at issue was prepared for an inter partes reexamination proceeding in a different patent owned by a third party not involved in the Inter Partes Review.  As such, the declarant, Dr. Shibanuma, is a third party. The petitioner first relied on the expert declaration in the petitioner response.  The declaration was used by the petitioner to rebut the patent owner’s assertions that using a particular refrigerant would not have been obvious.  (Paper No. 27 at p. 14).  Because the declaration was not prepared for the Inter Partes Review proceeding, the declaration is not considered new testimony prepared for this proceeding.  Thus, cross-examination is not permitted as routine discovery under §42.51(b)(1)(ii).

Concerned that the declaration did not adequately address certain aspects of unsaturated refrigerants as compared to saturated refrigerants, the patent owner conferred with the PTAB and was permitted to file a motion for additional discovery. (Paper No. 31 at p. 3).  Noting the petitioner did not present Dr. Shibanuma’s declaration until after the patent owner response, the patent owner argued that a deposition of Dr. Shibanuma is the “only means to determine the foundation, contexts and facts underlying the statements in the Declaration, as well as the conviction and credibility of Dr. Shibanuma.”  (Paper No. 32 at pp. 4-5).  Further, the patent owner opined that the policy of allowing a party to submit and rely on declarations in “unrelated proceedings without cross-examination provides improper incentives for parties to purposefully engage in such conduct, thereby circumventing the rules of Inter Partes Review proceedings.”

Ultimately, the PTAB denied the patent owner’s motion for additional discovery.  While conceding that the patent owner’s position has merit, the fifth Garmin factor was largely relied on to deny the motion for additional discovery.  (Paper No. 36 at p. 2, citing Garmin Int’l Inc. et al. v. Speed Techs. LLC, IPR2012-00001, Paper No. 26).  Because the witness was not under petitioner’s control, lives in Japan and requires a court subpoena and/or invoke the Hague Convention, the patent owner request was deemed overly burdensome to answer.

While the PTAB did not compel the petitioner to produce Dr. Shibanuma, the PTAB noted that if petitioner does not produce Dr. Shibanuma of their own accord, the declaration will be given little or no weight because the patent owner has not been given a fair opportunity to challenge his testimony. (Paper No. 36 at p. 3).

Consequently, while the efforts taken by the patent owner failed in obtaining a deposition of Dr. Shibanuma, all was not lost.  To the contrary, using the motion for additional discovery, the patent owner successfully raised issues with the third party declaration for consideration by the PTAB and garnered positive comments regarding the weight ultimately given to this testimony.  Although not getting the decision to compel in its favor, the patent owner effectively rebutted this third party testimony rendering it of little probative value.


Dave Emery


Mr. Emery practices in all areas of patent law including: patent preparation and prosecution; patent litigation; patent reexamination (ex parte and inter partes); and counseling clients on intellectual property matters. He also engages in patent infringement and validity opinion practice and counseling, freedom to operate analysis, and due diligence and product clearance work.

His experience includes a wide range of electrical and mechanical technologies, including medical devices, heating and cooling systems, hydraulic applications, semiconductor design and manufacture, telecommunications equipment, automotive technologies, electrical power generation equipment, electrical transmission components, electric vehicles, welding equipment, image display devices, fiber optic distribution, and various computer and printer related technologies.