Petition for Inter Partes Review by 1964 Ears, LLC, IPR2016-00494 (PTAB January 10, 2017, Order) (Horvath, APJ)
Thursday, January 12, 2017
Petitioner’s Inability to Cross-Examine Patent Owner’s Expert Justifies Motion to Strike Expert’s Declaration
During a conference call, the Board granted the petitioner authorization to file a motion to strike the declaration of the patent owner's expert because the expert was unavailable for deposition prior to the due date of the petitioner's reply. "We advised Patent Owner that, given Petitioner’s inability to cross-examine [patent owner's expert] prior to the due date for Petitioner’s Reply, the likely remedy would be to strike [the expert's] declaration. Patent Owner’s counsel indicated he understood the likelihood of that outcome, and that he had advised his client [the expert] of the likelihood of that outcome prior to the conference call. [Patent owner's counsel] nonetheless indicated that [the expert] was not available for deposition prior to the due date for Petitioner’s Reply, and that he was acting in accordance with [the expert's] instructions in that regard. Additionally, [patent owner's counsel] did not request an extension of time for Petitioner’s Reply to accommodate the rescheduling of [the expert's] deposition, and did not indicate [the expert] would be available for deposition at any time."