Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 25
`Entered: August 21, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MINIATURE PRECISION COMPONENTS, INC.,
`Petitioner,
`
`v.
`
`EAGLE INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01403
`Patent 8,205,592 B2
`____________
`
`
`
`Before MICHAEL W. KIM, JAMES A. WORTH, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Motion to Submit Observations
`37 C.F.R. § 42.71
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 25
`Entered: August 21, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MINIATURE PRECISION COMPONENTS, INC.,
`Petitioner,
`
`v.
`
`EAGLE INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01403
`Patent 8,205,592 B2
`____________
`
`
`
`Before MICHAEL W. KIM, JAMES A. WORTH, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Motion to Submit Observations
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2017-01403
`Patent 8,205,592 B2
`
`
`Introduction
`On July 30, 2018, Patent Owner filed a Motion for Leave to Submit
`Observations on Deposition Examination. Paper 22 (the “Motion”). The
`Motion seeks leave to file observations related to the deposition of Dr. Marc
`Herrmann, Patent Owner’s own declarant. Id. at 1.
`On August 13, 2018, Petitioner contacted the Board to request a
`conference call to discuss a dispute over the propriety of Patent Owner’s
`Motion. Petitioner contends that the Motion lacks merit and fails to comply
`with our rules and precedent, because a party cannot file observations in this
`context, where Petitioner’s Reply did not include a reply witness and the
`Motion relates to cross-examination of Patent Owner’s own witness. The
`parties met and conferred on the matter, but could not reach agreement.
`For the reasons set forth below, the Motion is denied.
`
`Analysis
`Patent Owner’s Motion for Leave
`
`Patent Owner’s Motion suffers from a fatal flaw. The Motion seeks
`leave to file a motion—to submit observations—yet Patent Owner includes
`the observations within the Motion for leave to file the observations. See
`Paper 22, 2–6. In that sense, the Motion improperly presumes we have
`already granted Patent Owner’s Motion for Leave upon filing the Motion.
`See 37 C.F.R. § 42.20(b) (“Prior Authorization. A motion will not be
`entered without Board authorization.”). Although motions for observation
`of a reply witness do not require prior authorization, Patent Owner does not
`seek leave to file observations regarding such a witness—it seeks to file
`observations regarding the testimony of its own witness. Paper 22, 1. The
`Scheduling Order in this case implicitly pre-authorized the filing of a motion
`
`2
`
`
`
`IPR2017-01403
`Patent 8,205,592 B2
`
`for observations, but only for the situation involving observations regarding
`a reply witness: “[o]bservation on cross-examination provides the parties
`with a mechanism to draw the Board’s attention to relevant cross-
`examination testimony of a reply witness because no further substantive
`paper is permitted after the reply.” Paper 9, 5 (emphasis added).
`Our rule requiring a motion for leave prior to filing a motion helps
`ensure that movants are not able to submit arguments and evidence on the
`record, without permission, when the facts and circumstances do not warrant
`it. Patent Owner has done so here, by submitting substantive observations
`on cross-examination within its filing, without prior permission to do so.
`We, therefore, deny Patent Owner’s Motion based on this procedural
`deficiency alone.
`Even if we consider the merits of Patent Owner’s Motion, we are not
`persuaded that the situation here warrants departure from our usual practice
`of allowing observations on cross-examination from the party taking the
`cross examination of a reply witness. Patent Owner acknowledges that its
`request to file observations represents a departure from the typical practice,
`but does not explain adequately why that rule should not apply here. Paper
`22, 1. The mere fact that the deposition of Patent Owner’s witness, and the
`use of that testimony in Petitioner’s Reply, occurred after Patent Owner filed
`its Patent Owner Response does not justify allowing the observations here.
`Patent Owner should have been aware of their own declarant’s testimony,
`and also should have been aware that their declarant would be subject to
`cross-examination. The very nature of cross-examination is such that an
`opposing party attempts to illicit testimony unfavorable to the advancing
`
`3
`
`
`
`IPR2017-01403
`Patent 8,205,592 B2
`
`party. Put another way, each party advances the testimony of their own
`declarant at their peril.
`Moreover, Patent Owner is incorrect that it has “no other way to bring
`relevant testimony from Dr. Herrmann’s deposition to the Board’s
`attention.” Paper 22, 1. For example, Patent Owner can respond to any
`alleged mischaracterizations of the testimony in Petitioner’s Reply by
`bringing those mischaracterizations, and any supporting testimony from the
`deposition, to our attention at oral argument.
`
`Exhibits 1012 and 1013
`In the Motion and Petitioner’s request, the parties presume that the
`deposition transcript in question, Exhibit 1012, has been made of record in
`this proceeding. See Paper 22, 1. Our records do not indicate that either
`party has filed Exhibit 1012 or Exhibit 1013, even though they are referred
`to by Petitioner in the Petitioner’s Reply as if they were already filed by
`Petitioner. See Paper 21 (Petitioner’s Reply), iii. Although neither party has
`requested leave to file these Exhibits late, we sua sponte address the issue
`and find that it is in the interest of justice to allow for the late filing of
`Exhibits 1012 and 1013 by Petitioner. See 42 C.F.R. §§ 42.5(b), 42.5(c)(3).
`Among other reasons, Petitioner relies on these Exhibits expressly in their
`Reply, Patent Owner is clearly aware of these Exhibits, and we are at a point
`in the proceeding where we are unable to perceive appreciable prejudice to
`any party or the Board in allowing the Exhibits to be entered.
`
`4
`
`
`
`IPR2017-01403
`Patent 8,205,592 B2
`
`
`Order
`It is ORDERED that Patent Owner’s Motion for Leave to Submit
`Observations on Deposition Examination (Paper 22) is denied; and
`It is FURTHER ORDERED that Petitioner shall file Exhibits 1012
`and 1013 within one week of the date of this Order.
`
`
`
`For PETITIONER:
`
`John S. Artz
`Bryan J. Schomer
`DICKINSON WRIGHT PLLC
`jsartz@dickinsonwright.com
`bschomer@dickinsonwright.com
`
`
`For PATENT OWNER:
`
`Jacob D. Koering
`CANFIELD, PADDOCK & STONE
`koering@millercanfield.com
`
`
`5
`
`
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