`Tel: 571-272-7822
`
`Paper 41
`Entered: February 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASPHALT PRODUCTS UNLIMITED, INC.,
`Petitioner,
`v.
`BLACKLIDGE EMULSIONS, INC.,
`Patent Owner.
`
`
`
`Case IPR2017-01241 (Patent 7,503,724 B2)
`Case IPR2017-01242 (Patent 7,918,624 B2)
`
`
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`GOODSON, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Request for Authorization to
`File Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`On February 21, 2018, the panel held a conference call with counsel
`for the parties to discuss Petitioner’s request for authorization to file a
`motion for additional discovery. The additional discovery Petitioner seeks is
`a deposition of Mr. Roy B. Blacklidge, the sole named inventor of the
`patents challenged in these proceedings, U.S. Patent Nos. 7,503,724 (“the
`’724 patent”) and 7,918,624 (“the ’624 patent”) (collectively “the
`
`
`
`IPR2017-01241 (Patent 7,503,724 B2)
`IPR2017-01242 (Patent 7,918,624 B2)
`Challenged Patents”). See Ex. 1001, (75).1 A declaration from
`Mr. Blacklidge was submitted during prosecution of the ’724 patent, and
`Patent Owner submitted that declaration and referred to it in the Patent
`Owner Response in these proceedings. See Ex. 2081; Paper 32, 60–61, 64–
`66. In its email requesting the conference call, Petitioner stated that the
`“requested deposition would be restricted to the topics covered in
`Mr. Blacklidge’s declaration.” Petitioner arranged for a reporter to
`transcribe the call, and indicated that it would file the transcript as an exhibit
`in these proceedings.
`During the call, Patent Owner explained that it opposes Petitioner’s
`request on the grounds that Petitioner has not shown why a deposition would
`be in the interests of justice, considering that Mr. Blacklidge’s declaration
`was submitted more than ten years ago and it concerned events that took
`place years before that. In addition, Patent Owner expressed its concern that
`the declaration was quite lengthy and Patent Owner relied on only a small
`portion of the declaration in its Patent Owner Response, such that further
`clarification or limitations on the issues to be covered in the deposition may
`be necessary.
`After considering the arguments presented on the conference call, we
`authorize Petitioner to file a motion for additional discovery of no more than
`five pages. Patent Owner is authorized to file an opposition, which also
`must not exceed five pages. No reply is authorized at this time. In their
`briefs, the parties should address the factors set forth in the Board’s decision
`
`
`1 For expediency, citations in this Order refer only to the record in
`IPR2017-01241.
`
`2
`
`
`
`IPR2017-01241 (Patent 7,503,724 B2)
`IPR2017-01242 (Patent 7,918,624 B2)
`in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip
`op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential).
`We also note that, as discussed on the call, Mr. Blacklidge was
`deposed in Cases IPR2016-01031 and IPR2016-01032, which proceedings
`concerned the same Challenged Patents. During that deposition,
`Mr. Blacklidge was questioned about the declaration from the prosecution
`history of the ’724 patent. Petitioner indicated on the call that the Federal
`Rules of Evidence may constrain Petitioner’s ability to use the deposition
`transcript from the earlier proceedings in these proceedings. However,
`Patent Owner stated that it does not oppose Petitioner’s use of that transcript
`in these proceedings. Although Petitioner stated a preference to ask its own
`questions rather than rely on a transcript of a deposition conducted by
`another party, Patent Owner’s concession suggests a possible avenue for
`compromise. Against this backdrop, it would be helpful for Petitioner to
`address in its motion why another deposition of Mr. Blacklidge is
`appropriate considering the availability of the earlier deposition transcript
`covering the same proposed topic.
`For the foregoing reasons, it is
`ORDERED that Petitioner is authorized to file, no later than
`Wednesday, February 28, 2018, a motion for additional discovery not to
`exceed five pages; and
`FUTHER ORDERED that Patent Owner is authorized to file, no later
`than one week after the date on which Petitioner files its motion for
`additional discovery, an opposition not to exceed five pages.
`
`
`
`3
`
`
`
`IPR2017-01241 (Patent 7,503,724 B2)
`IPR2017-01242 (Patent 7,918,624 B2)
`PETITIONER:
`Robert Waddell
`Michael K. Leachman
`JONES WALKER LLP
`rwaddell@joneswalker.com
`mleachman@joneswalker.com
`
`PATENT OWNER:
`John F. Triggs
`Ryan D. Levy
`Seth R. Odgen
`PATTERSON INTELLECTUAL PROPERTY LAW, P.C.
`jft@iplawgroup.com
`rdl@iplawgroup.com
`sro@iplawgroup.com
`
`
`4
`
`
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