Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`Paper 63
`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.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 63
`Entered: February 12, 2014
`
`
`
`
`
`
`
`
`
`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)
`
`
`
`
`A conference call in the above proceedings was held on February 11,
`
`2014 between respective counsel for Petitioner and Patent Owner, and
`
`Judges Blankenship, Arbes, and Anderson. The following issues were
`
`discussed.
`
`
`
`Emails Produced as Additional Discovery
`
`The Board previously granted Petitioner’s motion for additional
`
`discovery of certain email communications exchanged directly between
`
`Patent Owner’s two declarants, Mr. Dmitry Radbel and Dr. Xin Wang. The
`
`Board stated in the decision that “[i]f, after receiving the email
`
`communications, Petitioner believes that additional action is necessary, it
`
`may request a conference call with the Board.” See IPR2013-00080, Paper
`
`66 at 9; IPR2013-00081, Paper 58 at 9.
`
`Petitioner argued during the call that a small number of the emails
`
`produced by Patent Owner are relevant to the credibility of Mr. Radbel and
`
`Dr. Wang and, therefore, impact the weight the Board should give to their
`
`testimony. For example, according to Petitioner, the witnesses made
`
`statements in the emails regarding the asserted prior art that are inconsistent
`
`with opinions they later expressed in their declarations. Petitioner sought
`
`authorization to file the allegedly relevant emails as exhibits and to file
`
`observations regarding the emails, using the same procedures the Board
`
`follows for observations on cross-examination of a witness. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767-68 (Aug. 14, 2012)
`
`(“Trial Practice Guide”). Patent Owner opposed Petitioner’s request,
`
`arguing that observations are limited to cross-examination testimony, the
`
`emails would be improper supplemental information, and the emails are not
`
`
`
`2
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`relevant because the witnesses’ opinions are expressed solely in their
`
`
`
`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.
`
`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
`
`so that the Board may consider them in assessing the testimony of Mr.
`
`Radbel and Dr. Wang, and that observations are the appropriate mechanism
`
`to do so. See 37 C.F.R. §§ 42.5(a), 42.20(d). The emails were not available
`
`when Mr. Radbel and Dr. Wang were cross-examined. As a result,
`
`Petitioner did not have an opportunity to question the witnesses about the
`
`emails and address them substantively in Petitioner’s replies. This is similar
`
`to the normal situation when the Board permits observations—namely, when
`
`“cross-examination occurs after a party has filed its last substantive paper on
`
`an issue” and the cross-examination results in “testimony that should be
`
`called to the Board’s attention.” See Trial Practice Guide, 77 Fed. Reg. at
`
`48,767-68. Thus, we conclude that observations regarding the emails are
`
`appropriate.
`
`Petitioner is authorized to file the limited number of emails discussed
`
`during the call and to file a motion for observation on those emails, and
`
`Patent Owner is authorized to file a response. As with observations on
`
`cross-examination, any observation must be a concise statement of the
`
`relevance of a precisely identified statement to a precisely identified
`
`argument or portion of an exhibit, and any response must be equally concise
`
`and specific. An observation (or response to an observation) is not an
`
`
`
`3
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`opportunity to raise new issues, re-argue issues, or pursue objections. Each
`
`
`
`observation should be in the following form:
`
`In Exhibit __, on page __, lines __, the witness said __.
`This statement is relevant to the __ on page __ of __. The
`testimony is relevant because __.
`
`The entire observation should not exceed one short paragraph. The Board
`
`may decline consideration or entry of excessively long or argumentative
`
`observations (or responses to observations).
`
`As to Patent Owner’s request that the emails be filed under seal,
`
`Patent Owner has not explained sufficiently why the emails are privileged or
`
`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
`
`under seal, Patent Owner is authorized to file a motion to seal. See 35
`
`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
`
`citing the emails, will be provisionally sealed pending disposition of Patent
`
`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:
`
`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.
`
`. . .
`
`
`
`4
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
`
`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.
`
`The parties also are advised that any motion to seal must be filed with a
`
`proposed protective order. 37 C.F.R. § 42.54(a).
`
`
`
`Conduct of the Hearing
`
`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,
`
`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
`
`in Case IPR2013-00081. During the call, Patent Owner requested that a
`
`short break be held between arguments for the two cases. A short break will
`
`be permitted. Also, Petitioner requested that the parties argue the two cases
`
`together rather than in sequence. Patent Owner opposed the request. We are
`
`not persuaded that arguing the two cases together would be more efficient or
`
`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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`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner is authorized to file, by February 17, 2014,
`
`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;
`
`FURTHER ORDERED that Petitioner is authorized to file, as exhibits
`
`in each of the instant proceedings, by February 17, 2014, copies of the
`
`emails that Petitioner references in its motion for observation;
`
`
`
`5
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
`
`FURTHER ORDERED that Patent Owner is authorized to file, by
`
`February 21, 2014, a response to the motion for observation, limited to five
`
`pages;
`
`FURTHER ORDERED that Patent Owner is authorized to file, by
`
`February 21, 2014, a motion to seal the emails filed by Petitioner,
`
`Petitioner’s motion for observation, and/or Patent Owner’s response to the
`
`motion for observation;
`
`FURTHER ORDERED that any opposition from Petitioner to Patent
`
`Owner’s motion to seal is due on February 28, 2014;
`
`FURTHER ORDERED that the motion papers authorized herein shall
`
`be filed in both Case IPR2013-00080 and Case IPR2013-00081 using the
`
`heading on the first page of this Order; and
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`FURTHER ORDERED that the parties shall file the emails, the
`
`motion for observation, and the response in the Patent Review Processing
`
`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.
`
`
`
`6
`
`
`
`
`
`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
`
`
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