`571-272-7822
`
`Date: October 12, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUMITOMO ELECTRIC INDUSTRIES, LTD.,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00966
`Patent 9,166,243 B2
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`At the joint request of the parties, the Board held an initial conference
`
`call in this matter on October 11, 2017. The following matters were
`discussed with counsel.
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`
`Schedule. The parties jointly requested extensions of Due Dates 1 and
`
`2 as set in our Scheduling Order (Paper 8), because they bridge the holiday
`season. Counsel noted that the parties could be granted a two-week
`extension of each date while still leaving three months between Due Date 7
`(oral hearing, if requested) and the deadline for a final written decision. We
`noted that the parties are free to stipulate to different dates for Due Dates 1
`through 5, and that additional time in the current schedule may be available
`if Patent Owner chooses not to file a motion to amend claims. We requested
`that the parties confer regarding the potential for such a stipulation, but if the
`parties are unable to reach agreement, we authorized the parties to file a joint
`motion to amend the Scheduling Order, setting forth new dates for Due
`Dates 1–7 that are agreeable to both parties. The parties are reminded that
`any requested dates will have to be evaluated in light of the scheduling needs
`of the Board.
`Motions List. The parties submitted a list of potential motions to the
`
`Board, including motions to exclude, motions for additional discovery, and a
`motion for an extension of time to file supplemental evidence. We generally
`discussed these potential motions with counsel, but both parties agreed that
`they had not yet determined whether any of the motions would be necessary.
`Authorization to file the motions is, therefore, premature. The parties were
`invited to return to the Board to request authorization if such motions
`become necessary.
`Foreign-Language Deposition. The parties informed us that on
`
`October 26, 2017, counsel for Patent Owner will depose Petitioner’s expert,
`and that the deposition will be conducted in a foreign language. Pursuant to
`the Board’s Rules, parties are to initiate a conference with the panel at least
`
`2
`
`
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`five business days before a deposition if an interpreter is to be used. 37
`C.F.R. § 42.53(e). As noted in the comments to the Rules, “[b]ased on the
`Board’s experience, non-English language depositions can be highly
`complex. In order to ensure such depositions are productive and to
`minimize unnecessary cost and delay, prior Board authorization is required.”
`77 Fed. Reg. 48,624 (Aug. 14, 2012).
`
`Based on the brief explanation provided by counsel during the phone
`call, it appears the parties have been able to reach agreement regarding the
`procedures to be used during the deposition, and that further involvement by
`the Board is unnecessary at this time. To the extent further guidance is
`required, the parties are directed to the Board’s Order articulating guidelines
`for the conduct of foreign-language depositions in Ariosa Diagnostics v. Isis
`Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013)
`(informative) (available at https://go.usa.gov/xnad2).
`
`
`In light of the foregoing, it is
`
`ORDERED that, the parties are authorized to file, on or before
`October 18, 2017, a motion to amend the scheduling order if they are unable
`to reach agreement on a stipulation as outlined above; and
`
`FURTHER ORDERED that the parties’ obligation to confer with the
`Board pursuant to 37 C.F.R. § 42.53(e) has been met.
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`For PETITIONER:
`
`John S. Goetz
`John Pegram
`FISH & RICHARDSON P.C.
`goetz@fr.com
`pegram@fr.com
`PTABInbound@fr.com
`
`For PATENT OWNER:
`
`Theodore Olds
`Matthew Koziarz
`CARLSON, GASKEY & OLDS, P.C.
`tolds@cgolaw.com
`mkoziarz@cgolaw.com
`
`
`
`
`
`4
`
`
`
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