`571-272-7822
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`Paper 34
`Entered: September 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZHONGSHAN BROAD OCEAN MOTOR CO., LTD.,
`BROAD OCEAN MOTOR LLC, and
`BROAD OCEAN TECHNOLOGIES, LLC,
`Petitioners,
`
`v.
`
`NIDEC MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2014-01121 (Patent 7,626,349 B2)
`Case IPR2014-01122 (Patent 7,208,895 B2)1
`
`____________
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`
`
`
`
`Before BENJAMIN D. M. WOOD, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
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`1 The parties are not authorized to use this style of caption.
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`
`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`
`
`A conference call was held with counsel for the parties and Judges
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`Wood, Tartal, and Boucher on September 9, 2015.
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`First, certain exhibits filed in these proceedings are excerpts from
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`deposition transcripts. We order the parties to file full transcripts of any
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`deposition relied on by a party. Specifically, the party that first relied on any
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`citation to a deposition transcript shall file the full transcript of that
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`deposition as an exhibit. Any future deposition transcripts that may be filed
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`in these proceedings shall also be filed as full transcripts.
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`Second, Petitioner’s Replies cite excerpts of deposition testimony of
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`Patent Owner’s witnesses. Patent Owner requests authorization to cite
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`additional testimony from the full deposition transcripts to place the excerpts
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`relied on by Petitioner in context. The Board’s regulations for inter partes
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`review proceedings do not specifically provide a mechanism for a party to
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`provide observations on cross-examination of its own witnesses. A similar
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`request was considered in Schott Gemtron Corp. v. SSW Holding Co., Inc.,
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`Case IPR2013-00358, slip op. at 2 (PTAB May 16, 2014) (Paper 77). The
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`Schott panel denied the patent owner’s request to file observations but
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`authorized the patent owner to cite other portions of the deposition testimony
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`at the oral hearing for “a limited purpose.” Schott at 3–4. Specifically, the
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`patent owner was authorized to “cite other portions of the testimony only to
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`demonstrate that Petitioner’s characterization of the witnesses’ testimony is
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`incorrect (e.g., Petitioner cites to the transcript where a witness made a
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`particular statement, but the witness later corrected his testimony and said
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`the opposite).” Id. at 4. The patent owner was not authorized to cite other
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`2
`
`
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`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
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`portions of the testimony to make any new argument or expand on the
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`testimony in the witnesses’ declarations. Id.
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`The Board’s regulations provide that “the Federal Rules of Evidence
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`shall apply to a[n inter partes review] proceeding.” 37 C.F.R. § 42.62(a).
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`The Federal Rules of Evidence provide that “[w]hen a writing or recorded
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`statement or part thereof is introduced by a party, an adverse party may
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`require the introduction at that time of any other part or any other writing or
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`recorded statement which ought in fairness to be considered
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`contemporaneously with it.” Fed. R. Evid. 106. The context of a witness’s
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`statements “ought in fairness” to be considered “contemporaneously” when
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`evaluating the witness’s testimony. It would be helpful to the Board to have
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`context-providing statements identified by the adverse party, and we see
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`little value in deferring such identification to the oral hearing; the Board
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`routinely considers the entire record in preparation for the oral hearing.
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`Accordingly, we authorize Patent Owner to file, as an exhibit, a chart
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`that identifies portions of deposition testimony that provide context for
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`portions relied on by Petitioner in its Replies. The identifications shall be by
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`page and line number, and no additional statement or explanation is
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`authorized.
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`Third, Petitioner’s Replies cite excerpts of deposition testimony of Dr.
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`Ehsani taken before Patent Owner filed its Response. Patent Owner requests
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`authorization to provide observations on cross-examination of Dr. Ehsani’s
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`testimony. The Office Patent Trial Practice Guide contemplates that
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`observations on cross-examination may be authorized “[i]n the event that
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`3
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`
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`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
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`cross-examination occurs after a party has filed its last substantive paper on
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`an issue.” 77 Fed. Reg. 48,767 (Aug. 14, 2012). We see insufficiently
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`compelling reason for an exception in this instance. Patent Owner was able
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`to file its Patent Owner Response after cross-examination of Dr. Ehsani
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`occurred. Accordingly, the request is denied.
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`
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`It is
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`ORDERED that the party that first relied or relies on any citation to a
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`deposition transcript shall file the full transcript of that deposition as an
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`exhibit;
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`FURTHER ORDERED that Patent Owner is authorized to file, as an
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`exhibit, a chart that identifies portions of deposition testimony that provide
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`context for portions relied on by Petitioner in its Replies; and
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`FURTHER ORDERED that Patent Owner’s request for authorization
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`to provide observations on cross-examination of Dr. Ehsani’s testimony is
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`denied.
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`
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`
`4
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`
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`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
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`PETITIONER:
`
`Steven Meyer
`ptopatentcommunication@lockelord.com
`
`Charles Baker
`cbaker@lockelord.com
`
`
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`PATENT OWNER:
`
`Scott Brown
`jcrawford@hoveywilliams.com
`
`Matthew Walters
`mwalters@hoveywilliams.com
`
`
`
`
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`5