Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 14
`Entered: August 28, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FINJAN, INC.,
`Petitioner,
`
`v.
`
`FIREEYE, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00492
`Patent 8,171,553 B2
`__________
`
`
`Before BRYAN F. MOORE, LYNNE E. PETTIGREW, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.05
`
`
`571-272-7822
`
`
`
` Paper 14
`Entered: August 28, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FINJAN, INC.,
`Petitioner,
`
`v.
`
`FIREEYE, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00492
`Patent 8,171,553 B2
`__________
`
`
`Before BRYAN F. MOORE, LYNNE E. PETTIGREW, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.05
`
`
`
`IPR2014-00492
`Patent 8,171,553 B2
`
`INTRODUCTION
`
`In an email correspondence sent to the Board on August 28, 2014,
`
`Patent Owner’s counsel requested an emergency conference call to seek
`
`guidance in resolving disputes related to the deposition of Petitioner’s
`
`declarant, Dr. Trent Jaeger. Following the email request, a conference call
`
`was held on the same day between respective counsel for Petitioner and
`
`Patent Owner, and Judges Moore and Ippolito. A court reporter was present
`
`on the call, and Patent Owner indicated that it would file a transcript of the
`
`call in due course.1
`
`DISCUSSION
`
`During the call, Patent Owner indicated that the parties had previously
`
`agreed to conduct Dr. Jaeger’s deposition for a full day on August 27, 2014
`
`and a half-day on August 28, 2014. According to Patent Owner, at the time
`
`of the conference call with the Board, the deposition of Dr. Jaeger was in
`
`process but had not been completed due to Dr. Jaeger’s non-responsive
`
`answers and excessive delays in responding to questions. Patent Owner also
`
`argued that counsel for Petitioner had made inappropriate “speaking”
`
`objections, which made it difficult for Patent Owner to take an effective
`
`deposition. Patent Owner requested that: (1) Dr. Jaeger’s deposition be
`
`continued an additional full day; (2) the continued deposition take place in
`
`California as opposed to Pennsylvania; and (3) if the deposition takes place
`
`in California, Petitioner be required to pay Dr. Jaeger’s travel costs.
`
`Petitioner disputed Patent Owner’s characterization of Dr. Jaeger’s
`
`testimony during the deposition and, further, did not agree to the change in
`
`deposition location and payment of travel costs to California. However,
`
`
`1 This order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
`2
`
`
`
`
`
`IPR2014-00492
`Patent 8,171,553 B2
`
`Petitioner was not opposed to making Dr. Jaeger available for additional
`
`deposition time if needed, and suggested three and half (3.5) hours.
`
`Generally, we remind the parties that the “Testimony Guidelines”
`
`provided in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`App’x D (Aug. 14, 2012) address many of the issues that arise during a
`
`deposition such as the type and manner of objections that may be made. We
`
`also direct the parties’ attention to 37 C.F.R. § 42.53(b)-(g) for additional
`
`guidance. For example, 37 C.F.R. § 41.53(g) provides that “the proponent
`
`of the direct testimony shall bear all costs associated with the testimony,
`
`including the reasonable costs associated with making the witness available
`
`for the cross-examination.” Nonetheless, based on the particular facts in this
`
`case, we take this matter under advisement. To ensure full consideration of
`
`the issues, the Patent Owner will be required to file the transcript of Dr.
`
`Jaeger’s deposition along with a paper of no more than five (5) pages that
`
`lists portions of the transcript (e.g., page numbers, line numbers, time-
`
`stamps, etc.) with a brief explanation as to why the listed portions have been
`
`presented for our consideration. Likewise, Petitioner is required to file a
`
`paper of no more than five (5) pages that lists portions of the transcript and
`
`briefly explains why the listed portions require our review.
`
`Upon receipt of these documents, we will consider Patent Owner’s
`
`request for additional deposition time, change in deposition location, and
`
`any applicable cost shifting.
`
`ORDER
`
`In view of the foregoing considerations, it is hereby:
`
`ORDERED that Patent Owner shall file by September 3, 2014, the
`
`transcript of Dr. Trent Jaeger’s deposition conducted on August 27 and 28,
`
`3
`
`2014;
`
`
`
`
`
`IPR2014-00492
`Patent 8,171,553 B2
`
`FURTHER ORDERED that Patent Owner shall file by 6:00 pm EST
`
`September 3, 2014, a paper of no more than five (5) pages that lists portions
`
`of Dr. Jaeger’s transcript and explains why the listed portions have been
`
`submitted for our review; and
`
`FURTHER ORDERED that Petitioner shall file by 6:00 pm EST
`
`September 4, 2014, a paper of no more than five (5) pages that lists portions
`
`of Dr. Jaeger’s transcript and explains why the listed portions have been
`
`submitted for our review.
`
`
`
`PETITIONER:
`
`
`
`James R. Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
` Michael Lee
`mhlee@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`
`
`PATENT OWNER:
`
`
`David L. McCombs
`David.mccombs.ipr@haynesboone.com
`Thomas B. King
`ipr.thomas.king@haynesboone.com
`Gregory P. Huh
`gregory.huh.ipr@haynesboone.com
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`
`
`4
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