Trials@uspto.gov
`571-272-7822
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` Paper 50
`Entered: July 18, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2012-00001 (JL)
`Patent 6,778,074
`____________
`
`
`Before JAMESON LEE, MICHAEL P. TIERNEY, and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
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`571-272-7822
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` Paper 50
`Entered: July 18, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`____________
`
`Case IPR2012-00001 (JL)
`Patent 6,778,074
`____________
`
`
`Before JAMESON LEE, MICHAEL P. TIERNEY, and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Case IPR 2012-00001
`Patent 6,778,074
`
`INTRODUCTION
`A joint telephone conference was held on July 16, 2013, between respective
`counsel for the parties and Judges Tierney, Lee, and Cocks. The matter in dispute
`concerns errata sheets Cuozzo has filed in connection with the cross-examination
`testimony of Cuozzo’s inventor Mr. Giuseppe Cuozzo and expert witness Dr.
`James Morris. The cross examination of Mr. Giuseppe Cuozzo occurred on May
`14, 2013, and of Dr. James Morris occurred on May 15, 2013. Petitioner Garmin
`filed on May 21, 2013, its reply to Cuozzo’s Patent Owner Response, and also its
`opposition to Patent Owner’s Motion to Amend Claims, at least one of which
`paper cited and referred to some cross examination testimony of the witnesses.
`Cuozzo then filed on June 21, 2013, its reply to Garmin’s opposition to Cuozzo’s
`Motion to Amend Claims, and also filed, without prior authorization from the
`Board, the errata sheets as Exhibits 1026 and 1027.
`On July 10, 2013, the parties jointly requested a conference call with the
`Board to resolve their dispute regarding the propriety of the filing of the errata
`sheets without prior authorization from the Board.
`
`DISCUSSION
`The rules for an inter partes review do not provide for the filing of errata
`
`sheets in connection with the deposition testimony of a witness. Thus, a party
`intending to file an errata sheet, for whatever purpose, especially if it is to change
`the substantive testimony of a witness, must contact the Board and obtain prior
`authorization before doing so. One of the comments to the proposed rules for
`implementing inter partes review, post grant review, and covered business method
`
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`2
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`Case IPR 2012-00001
`Patent 6,778,074
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`patent review inquired about errata sheets and what is or is not acceptable in an
`errata sheet, and the Office’s response is that the rules do not provide for the
`submission of errata sheets and that a party who believes an errata sheet is
`necessary may request a conference call with the Board. Rules of Practice for
`Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent
`Trial and Appeal Board Decision; Final Rule, 77 Fed. Reg. 48612, 48642 (Aug.
`14, 2012)(Response to Comments).
`
`The Board notes that the opportunity has passed for Garmin to continue with
`the cross examination in light of the proposed change, and that Garmin already has
`filed a submission based on and citing to original and unchanged testimony.
`
`The Board further notes that cross examination of a live witness has
`important value in obtaining the dynamic and contemporaneous response of the
`witness and does not have the characteristic of an interrogatory to be answered at
`home after thorough study over a long period of time. Also, particularly if the
`opposing party has filed a paper identifying the deficiencies in the original
`testimony, it would be unfair to permit a party to attempt to cure those deficiencies
`by changing or adding to the original testimony, thus nullifying the challenges and
`circumventing procedure.
`
`Moreover, the party proffering the witness for cross examination has the
`opportunity to conduct redirect examination of the witness immediately following
`the cross examination, to cure any perceived deficiency or to make more complete
`an answer. In this case, it is undisputed that the errata sheets materially alter the
`substantive testimony of inventor Giuseppe Cuozzo and expert witness Dr. James
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`3
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`Case IPR 2012-00001
`Patent 6,778,074
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`Morris. It is also undisputed that Garmin’s filings on May 21, 2013, cited to and
`discussed original unchanged testimony of the witnesses. It is further undisputed
`that after Cuozzo’s unauthorized filing of the errata sheets on June 21, 2013,
`Garmin did not have an opportunity to conduct further cross examination of the
`witnesses or to submit a revised reply to Cuozzo’s Patent Owner Response or a
`revised opposition to Cuozzo’s Motion to Amend Claims.
`
`Cuozzo contacted the Board way too late for its request to change the cross
`examination testimony of its witnesses. It does not mean that had the Board been
`contacted shortly after the cross examination, the request to change the substantive
`testimony would have been granted. We take this opportunity to state that unless
`unopposed by the other party, a request to make a material change to the substance
`of cross examination testimony is unlikely to be successful no matter when the
`request is made. Error in transcription is a different matter.
`CONCLUSION
`For the foregoing reasons, it is
`
`ORDERED that Cuozzo’s filing of the errata sheets is unauthorized and
`
`Exhibits 1026 and 1027 will be expunged from the record;
`FURTHER ORDERED that reliance by any party on either errata sheet or
`Exhibit 1026 and/or Exhibit 1027 will be as good as null and regarded as
`unsupported by the record; and
`FURTHER ORDERED that the parties may file a joint request for filing an
`errata sheet, labeled as an exhibit, that corrects spelling or typographical errors,
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`4
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`Case IPR 2012-00001
`Patent 6,778,074
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`which do not change the substance of the testimony, within one week of the date of
`this communication.
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`5
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`Case IPR 2012-00001
`Patent 6,778,074
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`For PETITIONER:
`
`Jennifer C. Bailey
`HOVEY WILLIAMS LLP
`jcb@hoveywilliams.com
`
`Jason R. Mudd
`ERISE IP, P.A.
`Jason.Mudd@EriseIP.com
`
`
`For PATENT OWNER:
`
`John R. Kasha
`Kelley Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`kelley.kasha@kashalaw.com
`
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`6
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