`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