Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 18
`Entered: September 18, 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. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 18
`Entered: September 18, 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. § 42.5
`
`
`
`IPR2014-00492
`Patent 8,171,553 B2
`
`INTRODUCTION
`
`Pursuant to our Order entered on August 28, 2014 (Paper 14), Patent
`
`Owner filed Dr. Jaeger’s deposition transcript (Exs. 2003–2006) with a brief
`
`explanation directing us to portions of the transcript to consider in reviewing
`
`Patent Owner’s Submission Regarding the Deposition of Dr. Trent Jaeger
`
`and Request for Relief (Paper 15, “Request for Relief”). In its Request for
`
`Relief, Patent Owner seeks an additional seven (7) hours to depose Dr.
`
`Jaeger in California or at PTAB offices in Alexandria, Virginia. Request for
`
`Relief 5. Petitioner opposes Patent Owner’s requests. Paper 16
`
`(“Opposition”). This decision addresses these issues.
`
`DISCUSSION
`
`
`
`Patent Owner asserts that during Dr. Jaeger’s deposition on August 27
`
`and 28, Dr. Jaeger was evasive and refused to answer or avoided answering
`
`questions, including questions directed to the prior art references at issue in
`
`this inter partes review. Request for Relief 2–3. Patent Owner further
`
`asserts that Dr. Jaeger “frustrated the deposition process through lengthy
`
`pauses between questions and answers.” Id. at 3. Patent Owner also points
`
`to several instances in the transcript where Patent Owner asserts Petitioner’s
`
`counsel made inappropriate objections that “suggested an answer to the
`
`witness, who upon hearing the objection agreed with it and refused to
`
`answer.” Id. at 4.
`
`In response, Petitioner asserts that Dr. Jaeger provided responsive
`
`testimony “despite deeply flawed, confusing, ambiguous and harassing
`
`questions asked by the Patent Owner.” Opposition 1. Petitioner further
`
`asserts that during “Dr. Jaeger’s ‘pauses,’ he was diligently consulting his
`
`Declarations (which each run approximately 350 pages) or specific
`
`references.” Id. at 2. Patent Owner adds that “the number of objections
`
`
`
`
`2
`
`
`
`IPR2014-00492
`Patent 8,171,553 B2
`
`made by Petitioner’s counsel is indicative of the unclear and harassing
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`nature of Patent Owner’s questions that continued throughout the
`
`deposition.” Id. at 4. Petitioner further asserts it would suffer prejudice if
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`Patent Owner is permitted “the strategic advantage of having extensive time
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`to consider Dr. Jaeger’s initial testimony before taking additional deposition
`
`testimony.” Id. at 1.
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`Upon review of the transcript, we are persuaded that permitting an
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`additional seven (7) hours for Patent Owner to depose Dr. Jaeger is
`
`warranted. As Patent Owner indicates, we observe several locations in the
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`transcript where Dr. Jaeger took long pauses before answering Patent
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`Owner’s question. Request for Relief 4 (citing Ex. 2004, 128:11–24, 129:9–
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`16, 164:14–165:11). Moreover, as Petitioner noted, Dr. Jaeger’s two
`
`declarations are sizeable with each spanning more than 300 pages. Thus, the
`
`length of Dr. Jaeger’s two declarations and the delays in Dr. Jaeger’s
`
`answers evidence a need for additional deposition time to allow Patent
`
`Owner a fair cross-examination of Dr. Jaeger’s testimony.
`
`Further, we are not persuaded Petitioner would be prejudiced from
`
`Patent Owner’s attempt to “regroup[] and reassess strategy.” Petitioner
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`offered Patent Owner additional deposition time during the August 28th
`
`deposition and did not indicate then that any prejudice would result from the
`
`additional time. Opposition 5. Thus, we grant Patent Owner’s request for
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`an additional seven (7) hours in total for deposing Dr. Jaeger. Patent Owner
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`may allocate the seven (7) hours between the subject matter of IPR2014-
`
`00344 and IPR2014-00492 as needed. However, the additional deposition
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`time may not exceed seven (7) hours unless agreed to by the parties or
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`otherwise permitted by the Board. We do not, however, conclude that the
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`deposition location must be in California or at a PTAB office.
`
`
`
`
`3
`
`
`
`IPR2014-00492
`Patent 8,171,553 B2
`
`We also take this opportunity to observe a general lack of courtesy
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`and decorum from counsel for both parties. See Ex. 2003, 99:20–102:10;
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`164:14–165:22. The parties are strongly cautioned to follow all rules
`
`applicable to this proceeding, including that “[e]very party must act with
`
`courtesy and decorum, . . . including in interactions with other parties.” 37
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`C.F.R. § 42.1(c). Further, in any future deposition in this proceeding, the
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`parties shall refrain from interrupting each other and the witness, and shall
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`not make speaking objections. See Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,772 (Aug. 14, 2012). In particular, counsel must not
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`make objections or statements that suggest an answer to a witness and
`
`objections should be limited to a single word or term. Id. (emphasis
`
`added). Objections to form are properly stated as “Objection, form.”
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`Finally, we remind the parties of the need to confer with each other
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`sufficiently, and attempt in good faith to resolve issues, before seeking
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`intervention from the Board. For example, the parties should confer on a
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`reasonable location and time for Dr. Jaeger’s continued deposition. In the
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`event that the parties are not able to come to an agreement, the parties should
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`contact the Board for assistance.
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`ORDER
`
`In view of the foregoing considerations, it is hereby:
`
`ORDERED that Patent Owner’s request for additional time to cross-
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`examine Dr. Jaeger for IPR2014-00344 and IPR2014-00492 is granted with
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`a limit to a total of seven (7) hours; and
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`FURTHER ORDERED that Petitioner shall make Dr. Jaeger available
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`as soon as possible for the completion of his cross-examination pursuant to
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`37 C.F.R.§ 42.53(c)(2).
`
`
`
`
`4
`
`
`
`IPR2014-00492
`Patent 8,171,553 B2
`
`PETITIONER:
`
`James R. Hannah Michael Lee
`Kramer Levin Naftalis & Frankel LLP
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`
`PATENT OWNER:
`
`
`David L. McCombs
`Thomas B. King
`Gregory P. Huh
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`ipr.thomas.king@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`
`
`
`
`5
`
`
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