throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 34
`Entered: September 10, 2015
`
`
`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
`
`____________
`
`
`
`
`
`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
`
`
`
`
`1 The parties are not authorized to use this style of caption.
`
`

`
`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
`
`Wood, Tartal, and Boucher on September 9, 2015.
`
`First, certain exhibits filed in these proceedings are excerpts from
`
`deposition transcripts. We order the parties to file full transcripts of any
`
`deposition relied on by a party. Specifically, the party that first relied on any
`
`citation to a deposition transcript shall file the full transcript of that
`
`deposition as an exhibit. Any future deposition transcripts that may be filed
`
`in these proceedings shall also be filed as full transcripts.
`
`Second, Petitioner’s Replies cite excerpts of deposition testimony of
`
`Patent Owner’s witnesses. Patent Owner requests authorization to cite
`
`additional testimony from the full deposition transcripts to place the excerpts
`
`relied on by Petitioner in context. The Board’s regulations for inter partes
`
`review proceedings do not specifically provide a mechanism for a party to
`
`provide observations on cross-examination of its own witnesses. A similar
`
`request was considered in Schott Gemtron Corp. v. SSW Holding Co., Inc.,
`
`Case IPR2013-00358, slip op. at 2 (PTAB May 16, 2014) (Paper 77). The
`
`Schott panel denied the patent owner’s request to file observations but
`
`authorized the patent owner to cite other portions of the deposition testimony
`
`at the oral hearing for “a limited purpose.” Schott at 3–4. Specifically, the
`
`patent owner was authorized to “cite other portions of the testimony only to
`
`demonstrate that Petitioner’s characterization of the witnesses’ testimony is
`
`incorrect (e.g., Petitioner cites to the transcript where a witness made a
`
`particular statement, but the witness later corrected his testimony and said
`
`the opposite).” Id. at 4. The patent owner was not authorized to cite other
`
`2
`
`

`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`
`portions of the testimony to make any new argument or expand on the
`
`testimony in the witnesses’ declarations. Id.
`
`The Board’s regulations provide that “the Federal Rules of Evidence
`
`shall apply to a[n inter partes review] proceeding.” 37 C.F.R. § 42.62(a).
`
`The Federal Rules of Evidence provide that “[w]hen a writing or recorded
`
`statement or part thereof is introduced by a party, an adverse party may
`
`require the introduction at that time of any other part or any other writing or
`
`recorded statement which ought in fairness to be considered
`
`contemporaneously with it.” Fed. R. Evid. 106. The context of a witness’s
`
`statements “ought in fairness” to be considered “contemporaneously” when
`
`evaluating the witness’s testimony. It would be helpful to the Board to have
`
`context-providing statements identified by the adverse party, and we see
`
`little value in deferring such identification to the oral hearing; the Board
`
`routinely considers the entire record in preparation for the oral hearing.
`
`Accordingly, we authorize Patent Owner to file, as an exhibit, a chart
`
`that identifies portions of deposition testimony that provide context for
`
`portions relied on by Petitioner in its Replies. The identifications shall be by
`
`page and line number, and no additional statement or explanation is
`
`authorized.
`
`Third, Petitioner’s Replies cite excerpts of deposition testimony of Dr.
`
`Ehsani taken before Patent Owner filed its Response. Patent Owner requests
`
`authorization to provide observations on cross-examination of Dr. Ehsani’s
`
`testimony. The Office Patent Trial Practice Guide contemplates that
`
`observations on cross-examination may be authorized “[i]n the event that
`
`3
`
`

`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`
`cross-examination occurs after a party has filed its last substantive paper on
`
`an issue.” 77 Fed. Reg. 48,767 (Aug. 14, 2012). We see insufficiently
`
`compelling reason for an exception in this instance. Patent Owner was able
`
`to file its Patent Owner Response after cross-examination of Dr. Ehsani
`
`occurred. Accordingly, the request is denied.
`
`
`
`It is
`
`ORDERED that the party that first relied or relies on any citation to a
`
`deposition transcript shall file the full transcript of that deposition as an
`
`exhibit;
`
`FURTHER ORDERED that Patent Owner is authorized to file, as an
`
`exhibit, a chart that identifies portions of deposition testimony that provide
`
`context for portions relied on by Petitioner in its Replies; and
`
`FURTHER ORDERED that Patent Owner’s request for authorization
`
`to provide observations on cross-examination of Dr. Ehsani’s testimony is
`
`denied.
`
`
`
`
`
`4
`
`

`
`IPR2014-01121 (Patent 7,626,349 B2)
`IPR2014-01122 (Patent 7,208,895 B2)
`
`PETITIONER:
`
`Steven Meyer
`ptopatentcommunication@lockelord.com
`
`Charles Baker
`cbaker@lockelord.com
`
`
`
`PATENT OWNER:
`
`Scott Brown
`jcrawford@hoveywilliams.com
`
`Matthew Walters
`mwalters@hoveywilliams.com
`
`
`
`
`
`5

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