Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 36
`Entered: May 30, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`K-40 ELECTRONICS, LLC
`Petitioner
`
`v.
`
`ESCORT, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00203
`Patent 7,999,721
`______________
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`ORDER
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`

`
`IPR2013-00203
`Patent 7,999,721
`
`
`Petitioner, K-40 Electronics, LLC, seeks rehearing of the Board’s decision to
`
`permit live testimony from Steve Orr at the final hearing scheduled for June 17,
`
`2014. Paper 35 (“Reh. Req.”). For the reasons that follow, the request is granted
`
`in part.
`
`
`
`
`
`
`
`
`
`
`
`BACKGROUND
`
`Patent Owner, Escort, Inc., moved to present live testimony from its named
`
`inventor, Steven K. “Steve” Orr, at the final hearing in this case on June 17, 2014.
`
`Paper 28 (“Motion”). Petitioner, K-40 Electronics, LLC, opposed. Paper 29
`
`(“Opposition”).
`
`The Board granted the Motion, subject to certain restrictions, including that
`
`the testimony be limited to 30 minutes of cross-examination by Petitioner’s
`
`counsel, followed by 30 minutes of redirect by Patent Owner’s counsel. Paper 31
`
`(“Order”). The Board’s Order provided for no live direct testimony from Mr. Orr,
`
`relying instead on his declaration as his direct examination.
`
`Petitioner’s rehearing request asserts that the Board misapprehended or
`
`overlooked two matters. First, Petitioner now asserts that it has “[n]o [f]urther
`
`[q]uestions” for Mr. Orr. Reh. Req. 6 (emphasis removed). This is a new
`
`argument not presented in Petitioner’s Opposition. Second, Petitioner asserts that
`
`the Board overlooked the availability of a video recording of Mr. Orr’s deposition
`
`that would provide a record of his demeanor. Id. at 3.
`
`
`
`DISCUSSION
`
`A request for rehearing of a decision granting a motion must specifically
`
`identify all matters the party believes the Board misapprehended or overlooked in
`
`the decision. 37 C.F.R § 42.71(d). Moreover, the request must identify the place
`
`in the opposition where each matter was previously addressed. Id.
`
` 2
`
`
`
`
`
`

`
`IPR2013-00203
`Patent 7,999,721
`
`
`The first matter, namely, Petitioner’s representation that it has “[n]o [f]urther
`
`[q]uestions” for Mr. Orr, could not have been misapprehended or overlooked
`
`because it was first presented in Petitioner’s rehearing request. See Reh. Req. 2-3.
`
`Petitioner suggests that by allowing live testimony, the Board is ordering
`
`their counsel to cross-examine Mr. Orr, when they desire “to pass on further cross-
`
`examination of Mr. Orr.” Reh. Req. 3, 6. This is not accurate. The Board
`
`determined to authorize live testimony of Mr. Orr to permit the Board to observe
`
`his demeanor in a live setting. The Board is not ordering Petitioner to cross-
`
`examine Mr. Orr. The Board simply gave Petitioner the opportunity to question
`
`Mr. Orr first, if it chose to do so.
`
`Because Petitioner’s counsel have now informed the Board that they have no
`
`further questions for Mr. Orr, Patent Owner will be given the first opportunity to
`
`examine Mr. Orr. Petitioner may then, if it desires, cross-examine Mr. Orr at the
`
`hearing. In lieu of or in addition to cross-examining Mr. Orr at the hearing,
`
`Petitioner may rely also on his deposition testimony.
`
`As to the second matter, the Board did not overlook the existence of a video
`
`record of Mr. Orr’s deposition testimony. In fact, the existence of the video record
`
`was discussed during the April 25, 2014, telephone conference call authorizing the
`
`Motion and in Petitioner’s opposition to the Motion. Opposition 2-3. The Board
`
`was aware of the video record when it concluded that this case presents special
`
`circumstances warranting the presentation of live testimony. Order 2-3. The
`
`Board determined that notwithstanding the existence of the video record, there was
`
`good cause to grant the Motion.
`
`Although Petitioner’s representation that it has “[n]o [f]urther [q]uestions”
`
`for Mr. Orr was first presented in Petitioner’s rehearing request, the Board has
`
`reconsidered its decision to the extent that its Order did not authorize Petitioner to
`
` 3
`
`
`
`
`
`

`
`IPR2013-00203
`Patent 7,999,721
`
`use the video record. Therefore, in addition to the transcript of the Orr deposition,
`
`Petitioner will be permitted to submit and rely on portions of the video record of
`
`the deposition to the extent specified below.
`
`
`
`In view of the foregoing, it is, therefore,
`
`ORDER
`
`ORDERED that Patent Owner’s request for rehearing of the Board’s
`
`decision on Patent Owner’s Motion to present live testimony of Steve Orr is
`
`granted in part;
`
`FURTHER ORDERED that the Board’s Order of May 21, 2014, is
`
`modified, in that live testimony of Mr. Orr at the final hearing on June 17, 2014,
`
`will be limited to up to 30 minutes of direct testimony by Patent Owner’s counsel,
`
`followed by up to 30 minutes of cross-examination by Petitioner’s counsel, and
`
`any redirect examination will be at the discretion of the Board;
`
`FURTHER ORDERED that Petitioner may submit up to 30 minutes of
`
`video recording of Mr. Orr’s deposition testimony, no later than five business days
`
`after the final hearing;
`
`FURTHER ORDERED that live cross-examination of Mr. Orr by
`
`Petitioner’s counsel is optional; Petitioner may, if it wishes, rely on Mr. Orr’s
`
`deposition transcript, or the video record of that deposition, in lieu of or in addition
`
`to live cross-examination of Mr. Orr at the hearing; and
`
`FURTHER ORDERED that the scope of Mr. Orr’s direct examination will
`
`strictly be limited to his declaration testimony in this proceeding and the scope of
`
`his cross-examination will strictly be limited to the scope of direct examination.
`
` 4
`
`
`
`
`
`
`
`
`
`
`
`

`
`IPR2013-00203
`Patent 7,999,721
`
`For PETITIONER:
`Greg Gardella
`Scott McKeown
`OLBON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`
`
`For PATENT OWNER:
`Thomas W. Humphrey
`John Paul Davis
`WOOD HERRON & EVANS, LLP
`thumphrey@whe-law.com
`jdavis@whe-law.com
`
`
`
` 5