Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 29
`Date: March 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Cases1
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This order addresses issues raised in both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`571-272-7822
`
`
`
`
`Paper 29
`Date: March 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Cases1
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This order addresses issues raised in both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`INTRODUCTION
`I.
`On November 21, 2015, Patent Owner, Sauder Manufacturing
`Company (“Patent Owner”) filed a Patent Owner Response (Paper 13) in
`IPR2015-00774, accompanied by direct testimony in the form of
`declarations by Philip Bontrager (Exhibit 2008), David Harting (Exhibit
`2039), and Anthony Warncke (Exhibit 2046). Patent Owner also filed a
`Patent Owner Response (Paper 13) in IPR2015-00958, accompanied by
`direct testimony in the form of declarations by Philip Bontrager (Exhibit
`2072), David Harting (Exhibit 2039), and Anthony Warncke (Exhibit 2046).
`Petitioner, J Squared, Inc. d/b/a University Loft Company
`(“Petitioner”), cross-examined these witnesses by depositions conducted in
`January, 2016, and subsequently filed a Reply to Patent Owner’s Response
`on February 16, 2016 in each case (Paper 21), accompanied by complete
`transcripts of the depositions of each witness (Exhibits 1025, 1027, and
`1028). Petitioner’s Reply to Patent Owner’s Response filed in these cases
`did not introduce direct testimony of any reply witnesses.
`On March 28, 2016, Patent Owner filed motions for observations in
`each case on the cross-examination testimony of its own witnesses Philip
`Bontrager, David Harting, and Anthony Warncke (Papers 25, 26, and 27,
`respectively).
`Petitioner, through its counsel Scott McKeown, contacted the Board
`by email on March 29, 2016, to object to Patent Owner’s motions for
`observations, noting:
`Petitioner has no Reply witnesses, and as such,
`Patentee has not conducted any cross-examination
`whatsoever in these proceedings. The Scheduling
`Order in these proceedings, like all such Orders,
`
`2
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`only authorizes observations on cross examination
`of Reply witnesses. [Patent Owner’s] observations
`of its own witnesses constitute unauthorized sur-
`replies.
`Email by Petitioner’s Counsel to Board, copied to Patent Owner’s counsel of
`record, dated March 29, 2016. Petitioner requests expungement of these
`motions. Id.
`
`
`
`II. ANALYSIS
`The Office Patent Trial Practice Guide describes the use of
`observations on cross-examination as follows:
`In the event that cross-examination occurs
`after a party has filed its last substantive paper on an
`issue, such cross-examination may result
`in
`testimony that should be called to the Board’s
`attention, but the party does not believe a motion to
`exclude the testimony is warranted. The Board may
`authorize the filing of observations to identify such
`testimony and responses to observations, as defined
`below.
`The party taking the cross-examination files
`the observations. The opposing party may file a
`response to an observation. The opposing party may
`not
`file observations without express prior
`authorization.
`77 Fed. Reg. 48,756, 48,767‒682 (Aug. 14, 2012). Thus, it is the party
`taking the cross-examination that typically files observations, and the reason
`for permitting observations is that the cross-examination takes place after the
`party has filed its last substantive paper, such that the party has no way to
`
`
`2 Counsel for the parties were directed to this specific portion of the Office
`Patent Trial Practice Guide in the Board’s Scheduling Order in each case
`(Paper 8, at 6).
`
`3
`
`
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`bring relevant testimony to the Board’s attention. The rationale for
`observations does not apply in the instant situation, because it is Patent
`Owner that seeks to file observations on the cross-examination testimony of
`its own witnesses.
`Although the Office Patent Trial Practice Guide provides that
`authorization for motions for observations on cross-examination is
`automatically granted, such is the case only for motions filed by the party
`taking the cross-examination. 77 Fed. Reg. at 48,762‒63. A proponent of
`direct testimony must seek prior authorization from the Board prior to filing
`a motion for observations on cross-examination of its own direct witness.
`Patent Owner did not seek prior authorization for these motions, as is
`required by our rules. 37 C.F.R. § 42.20(b). The motions are, therefore,
`dismissed and the papers will be expunged.
`
`III. ORDER
`
`It is therefore
`ORDERED that Patent Owner’s Motions for Observations on Cross
`Examination (Papers 25, 26, and 27) filed in IPR2015-00774 and IPR2015-
`00958 are dismissed and will be expunged.
`
`
`
`
`4
`
`
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`
`PETITIONER:
`
`William F. Bahret
`BAHRET & ASSOCIATES LLC
`bahret@bahretlaw.com
`
`Scott A. McKeown
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmckeown@oblon.com
`
`Stephen F. Rost
`TAFT STETTINIUS & HOLLISTER LLP
`SRost@taftlaw.com
`
`PATENT OWNER:
`
`Thomas N. Young
`YOUNG BASILE HANLON & MACFARLANE P.C.
`david@youngbasile.com
`
`
`
`
`5
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
