`571.272.7822
`
`Paper 13
`Entered: June 14, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`DIGITAL STREAM IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01749
`Patent 6,757,913 B2
`____________
`
`
`
`
`
`Before MICHAEL J. FITZPATRICK, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2016-01749
`Patent 6,757,913 B2
`
`
`We held a conference call today with counsel for each party and Mr.
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`Kevin Jakel of Unified Patents. The call was requested by Patent Owner to
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`discuss its request to cross-examine Mr. Jakel on his testimony set forth in
`
`Exhibit 1012. Petitioner declined to produce Mr. Jakel for a deposition
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`voluntarily on the theory that Exhibit 1012 is not an affidavit within the
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`meaning of 37 C.F.R. § 42.51(b)(1)(ii), which Rule provides for the cross-
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`examination of affiants as part of routine discovery.
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`Exhibit 1012 is titled “Petitioner’s Voluntary Interrogatory
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`Responses.” Despite its format, we find that it constitutes an affidavit for
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`purposes of 37 C.F.R. § 42.51(b)(1)(ii). “Affidavit means affidavit or
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`declaration” wherever used in Part 42 of the Rules. See 37 C.F.R. § 42.2
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`(emphasis added). At the end of the interrogatory responses, Exhibit 1012
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`includes a “Verification” in which Mr. Jakel includes the following language
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`taken from 28 U.S.C. § 1746: “I declare under penalty of perjury that the
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`foregoing is true and correct.” Ex. 1012, 8; 28 U.S.C. § 1746(2). Thus, we
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`find that Exhibit 1012 is a declaration and, therefore, it is an affidavit as that
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`term is used in 37 C.F.R. § 42.51(b)(1)(ii).
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`As the panel decided during the conference call, in lieu of producing
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`Mr. Jakel for cross-examination, Petitioner is authorized to file a motion—
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`without arguments—to withdraw Exhibit 1012 in its entirety.
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`
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`Accordingly, it is
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`ORDERED that Petitioner may file a motion to withdraw
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`Exhibit 1012 within two business day of this Order; and
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`FURTHER ORDER that, if Petitioner does not so move, Patent
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`Owner promptly may depose Mr. Jakel.
`
`2
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`
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`IPR2016-01749
`Patent 6,757,913 B2
`
`
`
`PETITIONER:
`
`David Cavanaugh
`David.cavanaugh@wilmerhale.com
`
`Dan Williams
`Daniel.williams@wilmerhale.com
`
`Jonathan Stroud
`Jonathan@unifiedpatents.com
`
`
`
`PATENT OWNER:
`
`Tarek Fahmi
`Tarek.fahmi@ascendalaw.com
`
`Jason LaBerteaux
`Jason.laberteaux@ascendalaw.com
`
`
`3
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`