The Board allows parties to file, without prior approval, motions for observations on cross examination testimony to bring pertinent testimony to the attention of the Board when the testimony is presented after the party is not entitled to submit substantive briefing.
Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 46 (PTAB Sept. 10, 2013). The Board provided guidance on motions for observations on cross-examination testimony. The Board explained that observations on cross-examination provide a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness. Each observation must be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit. An observation is not an opportunity to raise new issues, re-argue issues, or pursue objections. The Board identified a form in which to present the observations, and specified that each observation should not exceed one short paragraphs. The Board may decline consideration or entry of argumentative observations. The Board also required that the pertinent cross-examination testimony be reproduced in the observation directed to that testimony, rather than referencing the testimony by page and line number.
Corning Inc. v. DSM IP Assets B.V., IPR2013-00048, Paper 94 (PTAB May 9, 2014). The Board may consider observations or the lack of observations in assessing the weight of witness testimony. In its reply, petitioner submitted the testimony of an expert to rebut the testimony of patent owner’s expert witness. The Board found the explanation of petitioner’s expert to be more persuasive because, although patent owner cross-examined petitioner’s expert extensively after his declaration was submitted with petitioner’s reply, patent owner did not call the Board’s attention to any of his testimony in patent owner’s motion for observations of petitioner’s reply declarants.
Actelion Pharmaceuticals Ltd v. Icos Corp., IPR2015-00561, Paper 33 (PTAB Mar. 18, 2016). The Board authorized patent owner to file a modified observation regarding cross-examination testimony, in response to petitioner’s objection that patent owner’s previous observation contained arguments. The Board agreed with petitioner, and explained that observations on cross examination are for the purpose of drawing the Board’s attention to relevant testimony; they are not an opportunity for additional briefing. Observations must be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit. Characterizations of evidence are not permitted, and the Board may refuse to consider argumentative observations.
J Squared, Inc. d/b/a Univ. Loft Co. v. Sauder Mfg. Co., IPR2015-00774, Paper 29 (PTAB Mar. 29, 2016). The Board expunged patent owner’s unauthorized motions for observations of its own witnesses. Although the Trial Practice Guide provides that authorization is automatically granted for motions for observations on cross-examination, such authorization is only for motions filed by the party taking the cross-examination. A proponent of direct testimony must seek prior authorization from the Board prior to filing a motion for observations on cross-examination of its own direct witness. The Board expunged the motions for observations since patent owner did not seek prior authorization for its motions, as is required.
Deere & Co. v. Richard Gramm, IPR2015-00898, Paper 27 (PTAB Apr. 6, 2016). The Board granted patent owner authorization to file a motion for observation regarding cross-examination testimony of its own witness. The witness is patent owner, the sole named inventor, and one of the real parties-in-interest. Patent owner’s request is more limited than what is contemplated typically by an observation as described in the Trial Practice Guide. Patent owner essentially requests the opportunity to designate responsive deposition testimony, nothing more. The Board determined that patent owner’s request is tailored narrowly, may be helpful to the Board’s review of the records in the proceeding, is not overly burdensome on petitioner, and does not give patent owner an unfair advantage or sur-reply because of the limited nature of the requested relief.
Epicor Software Corp. v. Protegrity Corp., CBM2015-00030, Paper 39 (PTAB June 2, 2016). The Board expunged patent owner’s motion for observation. The Board indicated that the cross- examination of petitioner’s expert occurred before patent owner filed its last substantive paper, making patent owner’s motion for observation improper. The Board also expunged petitioner’s opposition to patent owner’s observation as being unnecessary.
Masterimage 3D, Inc. v. RealD Inc., IPR2015-00400, Paper 91 (PTAB Sept. 1, 2016). The Board rejected patent owner’s argument that the final written decision did not indicate that the Board considered patent owner’s motion for observations on cross-examination, or the testimonial evidence adduced in that cross-examination. No specific discussion with respect to any item contained in the observations or any other cross- examination testimony was necessary. A motion for observation on cross-examination is an opportunity to call certain cross-examination testimony to the Board’s attention. It is not an opportunity to raise new issues or re-argue issues. It also is not in the nature of a general sur-reply.