`Tel: 571-272-7822
`
`Paper 31
`Entered: April 29, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`DYNAMIC DRINKWARE LLC
`Petitioner
`
`v.
`
`NATIONAL GRAPHICS, INC.
`Patent Owner
`
`
`
`
`
`Case IPR2013-00131
`Patent 6,635,196
`
`
`
`Before THOMAS L. GIANNETTI, TRENTON A. WARD, and MITCHELL G.
`WEATHERLY, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2013-00131
`Patent 6,635,196
`
` A
`
`
`
` conference call in this matter was held on April 21, 2014. The parties
`
`were represented by their respective counsel. Administrative Patent Judges
`
`Giannetti, Ward, and Weatherly participated.
`
`The conference was requested by Petitioner to discuss the following
`
`discovery issues:
`
`
`
`
`
`1. Divisional Application
`
`Petitioner contends that the Patent Owner should have disclosed a divisional
`
`application in which the Raymond reference at issue in this proceeding was cited.
`
`We agree. Our rules provide for mandatory disclosure of related administrative
`
`matters. 37 C.F.R. § 42.8(b)(2). This includes “every application and patent
`
`claiming, or which may claim, the benefit of the priority of the filing date of the
`
`party’s involved patent . . . .” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,760 (Aug. 14, 2012). Patent Owner, therefore, did not comply with the
`
`mandatory notice requirements. However, Petitioner independently discovered the
`
`divisional application prior to the deposition of Mr. Krause, Patent Owner’s
`
`founder and president, and therefore has not shown prejudice by Patent Owner’s
`
`omission.
`
`
`
`
`
`2. Krause Deposition
`
`Petitioner contends that Patent Owner’s counsel prevented Petitioner from
`
`questioning Mr. Krause about the divisional application and other matters by
`
`instructing Mr. Krause not to answer questions on the ground of relevance.
`
`Petitioner contends that such instructions are prohibited under the Board’s
`
`Testimony Guidelines, Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772-
`
`73. Specifically, the Testimony Guidelines provide: “Counsel may instruct a
`
`witness not to answer only when necessary to preserve a privilege, to enforce a
`
`2
`
`
`
`Case IPR2013-00131
`Patent 6,635,196
`
`limitation ordered by the Board, or to present a motion to terminate or limited
`
`testimony.” Id. at 48,772, ¶4.
`
`
`
`We have reviewed the Krause transcript and agree with Petitioner that the
`
`instructions to Mr. Krause not to answer were improper. Patent Owner does not
`
`contend that its counsel’s instructions to Mr. Krause fall within any of the
`
`exceptions permitted under the Guidelines. If counsel believed that the
`
`examination of Mr. Krause was being conducted in bad faith, or in a manner that
`
`unreasonably annoyed, embarrassed, or oppressed Mr. Krause or Patent Owner,
`
`counsel should have promptly initiated a conference call with the Board. Id. ¶ 9.
`
`Absent such extenuating circumstances, counsel should have stated its objections
`
`for the record and later moved to exclude the testimony. 37 C.F.R. § 42.64.
`
`
`
`Petitioner seeks authorization to file a motion for sanctions as a result of this
`
`conduct. Specifically, Petitioner asks the Board to preclude Patent Owner from
`
`antedating Raymond. Alternatively, Petitioner seeks to resume Mr. Krause’s
`
`deposition on the issues which they were not able to explore due to counsel’s
`
`obstruction. Patent Owner agrees to produce Mr. Krause for further examination,
`
`but opposes the attempt to preclude it from antedating Raymond.
`
`
`
`After considering the arguments presented, the panel has determined not to
`
`authorize the motion for sanctions at the present time. However, the panel believes
`
`that in addition to offering to produce Mr. Krause, Patent Owner should agree to
`
`bear the expense of providing a court reporter for his further examination. The
`
`panel, therefore, directs the parties to meet and confer on the arrangements for Mr.
`
`Krause’s deposition.
`
`
`
`
`
`In view of the foregoing, it is, therefore,
`
`ORDERED that Patent Owner will produce Mr. Krause at a mutually
`
`agreeable time and place for further examination on the divisional application and
`
`3
`
`
`
`Case IPR2013-00131
`Patent 6,635,196
`
`other matters that were the subject of counsel’s instructions not to answer;
`
`
`
`FURTHER ORDERED that prior to the deposition the parties will meet and
`
`confer regarding whether the expense of providing a court reporter for the further
`
`examination shall be borne by Patent Owner and shall report back to the Board if
`
`an agreement is not reached;
`
`
`
`FURTHER ORDERED that Petitioner’s request for authorization to file a
`
`motion for sanctions is denied without prejudice.
`
`
`
`4
`
`
`
`Case IPR2013-00131
`Patent 6,635,196
`
`PETITIONER:
`
`Joseph S. Heino
`Patrick M. Bergin
`DAVIS AND KUELTHAU, S.C.
`jheino@dkattorneys.com
`pbergin@dkattorneys.com
`
`PATENT OWNER:
`
`Michael T. Griggs
`Keith M. Baxter
`BOYLE FREDERICKSON, S.C.
`mtg@boylefred.com
`kmb@boylefred.com
`
`5
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