`Tel: 571-272-7822
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`Paper 73
`Entered: February 12, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ACHATES REFERENCE PUBLISHING, INC.
`Patent Owner
`____________
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)1
`
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, JUSTIN T. ARBES, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. Other
`than the motion papers expressly authorized herein, the parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
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`A conference call in the above proceedings was held on February 11,
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`2014 between respective counsel for Petitioner and Patent Owner, and
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`Judges Blankenship, Arbes, and Anderson. The following issues were
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`discussed.
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`
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`Emails Produced as Additional Discovery
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`The Board previously granted Petitioner’s motion for additional
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`discovery of certain email communications exchanged directly between
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`Patent Owner’s two declarants, Mr. Dmitry Radbel and Dr. Xin Wang. The
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`Board stated in the decision that “[i]f, after receiving the email
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`communications, Petitioner believes that additional action is necessary, it
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`may request a conference call with the Board.” See IPR2013-00080, Paper
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`66 at 9; IPR2013-00081, Paper 58 at 9.
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`Petitioner argued during the call that a small number of the emails
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`produced by Patent Owner are relevant to the credibility of Mr. Radbel and
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`Dr. Wang and, therefore, impact the weight the Board should give to their
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`testimony. For example, according to Petitioner, the witnesses made
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`statements in the emails regarding the asserted prior art that are inconsistent
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`with opinions they later expressed in their declarations. Petitioner sought
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`authorization to file the allegedly relevant emails as exhibits and to file
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`observations regarding the emails, using the same procedures the Board
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`follows for observations on cross-examination of a witness. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767-68 (Aug. 14, 2012)
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`(“Trial Practice Guide”). Patent Owner opposed Petitioner’s request,
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`arguing that observations are limited to cross-examination testimony, the
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`emails would be improper supplemental information, and the emails are not
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`
`
`2
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`relevant because the witnesses’ opinions are expressed solely in their
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`
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`declarations. Patent Owner also argued that the emails are privileged and
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`contain confidential information such that, if they are entered into the record
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`of these proceedings, the emails should be filed under seal. The Board took
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`the matter under advisement.
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`Under the circumstances and timing of these proceedings, we are
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`persuaded that the emails at issue should be brought to the Board’s attention
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`so that the Board may consider them in assessing the testimony of Mr.
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`Radbel and Dr. Wang, and that observations are the appropriate mechanism
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`to do so. See 37 C.F.R. §§ 42.5(a), 42.20(d). The emails were not available
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`when Mr. Radbel and Dr. Wang were cross-examined. As a result,
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`Petitioner did not have an opportunity to question the witnesses about the
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`emails and address them substantively in Petitioner’s replies. This is similar
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`to the normal situation when the Board permits observations—namely, when
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`“cross-examination occurs after a party has filed its last substantive paper on
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`an issue” and the cross-examination results in “testimony that should be
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`called to the Board’s attention.” See Trial Practice Guide, 77 Fed. Reg. at
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`48,767-68. Thus, we conclude that observations regarding the emails are
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`appropriate.
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`Petitioner is authorized to file the limited number of emails discussed
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`during the call and to file a motion for observation on those emails, and
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`Patent Owner is authorized to file a response. As with observations on
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`cross-examination, any observation must be a concise statement of the
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`relevance of a precisely identified statement to a precisely identified
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`argument or portion of an exhibit, and any response must be equally concise
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`and specific. An observation (or response to an observation) is not an
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`
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`3
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`opportunity to raise new issues, re-argue issues, or pursue objections. Each
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`
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`observation should be in the following form:
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`In Exhibit __, on page __, lines __, the witness said __.
`This statement is relevant to the __ on page __ of __. The
`testimony is relevant because __.
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`The entire observation should not exceed one short paragraph. The Board
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`may decline consideration or entry of excessively long or argumentative
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`observations (or responses to observations).
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`As to Patent Owner’s request that the emails be filed under seal,
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`Patent Owner has not explained sufficiently why the emails are privileged or
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`why one party’s belief that a document (already produced) is privileged is a
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`proper basis for sealing the document. See IPR2013-00080, Paper 57 at
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`2 n.1, Paper 66 at 8; IPR2013-00081, Paper 48 at 2 n.1, Paper 58 at 8.
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`However, to the extent Patent Owner believes the emails contain
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`“confidential information” and there is good cause for maintaining them
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`under seal, Patent Owner is authorized to file a motion to seal. See 35
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`U.S.C. § 316(a)(7); 37 C.F.R. §§ 42.14, 42.54(a). The emails themselves, as
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`well as Petitioner’s motion for observation and Patent Owner’s response
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`citing the emails, will be provisionally sealed pending disposition of Patent
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`Owner’s motion to seal. The parties are directed to the following guidance
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`in the Trial Practice Guide, 77 Fed. Reg. at 48,760, regarding the scope of
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`“confidential information” subject to a motion to seal:
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`The rules aim to strike a balance between the public’s
`interest in maintaining a complete and understandable file
`history and the parties’ interest in protecting truly sensitive
`information.
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`. . .
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`
`
`4
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`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
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`Confidential information: The rules identify confidential
`information in a manner consistent with Federal Rule of Civil
`Procedure 26(c)(1)(G), which provides for protective orders for
`trade secret or other confidential research, development, or
`commercial information. § 42.54.
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`The parties also are advised that any motion to seal must be filed with a
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`proposed protective order. 37 C.F.R. § 42.54(a).
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`
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`Conduct of the Hearing
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`The Board previously entered an Order stating the procedure for the
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`February 26, 2014 hearing in the instant proceedings. See IPR2013-00080,
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`Paper 67; IPR2013-00081, Paper 59. The Order provides for sequential
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`arguments, with arguments completed in Case IPR2013-00080 before those
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`in Case IPR2013-00081. During the call, Patent Owner requested that a
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`short break be held between arguments for the two cases. A short break will
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`be permitted. Also, Petitioner requested that the parties argue the two cases
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`together rather than in sequence. Patent Owner opposed the request. We are
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`not persuaded that arguing the two cases together would be more efficient or
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`otherwise preferable to arguing the two cases in sequence. Therefore, the
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`procedure outlined in the Order will not be changed.
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`
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner is authorized to file, by February 17, 2014,
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`a motion for observation on emails between Mr. Radbel and Dr. Wang
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`produced by Patent Owner in these proceedings, limited to five pages;
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`FURTHER ORDERED that Petitioner is authorized to file, as exhibits
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`in each of the instant proceedings, by February 17, 2014, copies of the
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`emails that Petitioner references in its motion for observation;
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`5
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
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`FURTHER ORDERED that Patent Owner is authorized to file, by
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`February 21, 2014, a response to the motion for observation, limited to five
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`pages;
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`FURTHER ORDERED that Patent Owner is authorized to file, by
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`February 21, 2014, a motion to seal the emails filed by Petitioner,
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`Petitioner’s motion for observation, and/or Patent Owner’s response to the
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`motion for observation;
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`FURTHER ORDERED that any opposition from Petitioner to Patent
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`Owner’s motion to seal is due on February 28, 2014;
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`FURTHER ORDERED that the motion papers authorized herein shall
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`be filed in both Case IPR2013-00080 and Case IPR2013-00081 using the
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`heading on the first page of this Order; and
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`FURTHER ORDERED that the parties shall file the emails, the
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`motion for observation, and the response in the Patent Review Processing
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`System (PRPS) as “Parties and Board Only,” and the documents will remain
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`provisionally sealed pending the disposition of Patent Owner’s motion to
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`seal.
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`
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`6
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
`
`
`
`PATENT OWNER:
`
`Brad D. Pedersen
`PATTERSON THUENTE PEDERSEN, P.A.
`prps@ptslaw.com
`
`Jason Paul DeMont
`KAPLAN BREYER SCHWARTZ & OTTESEN
`jpdemont@kbsolaw.com
`
`7