Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 25
`Entered: August 29, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioner,
`
`v.
`
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`
`Case IPR2017-01633 (Patent 6,866,812 B2)
`Case IPR2017-01647 (Patent 6,814,921 B1)
`
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Patent Owner contacted the Board by email requesting that we
`“compel Petitioners to make their declarant available for deposition on
`August 30.” Ex. 3001. The declarant in question appears to be Dr. David O.
`Kazmer, whose declaration Petitioner filed along with its Reply in each of
`
`
`
`
`Tel: 571-272-7822
`
`Paper: 25
`Entered: August 29, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioner,
`
`v.
`
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`
`Case IPR2017-01633 (Patent 6,866,812 B2)
`Case IPR2017-01647 (Patent 6,814,921 B1)
`
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Patent Owner contacted the Board by email requesting that we
`“compel Petitioners to make their declarant available for deposition on
`August 30.” Ex. 3001. The declarant in question appears to be Dr. David O.
`Kazmer, whose declaration Petitioner filed along with its Reply in each of
`
`
`
`
`
`IPR2017-01633 (Patent 6,866,812 B2)
`IPR2017-01647 (Patent 6,814,921 B1)
`these proceedings. Id. Patent Owner’s email to the Board contained a
`response from Petitioner arguing that it need not make Dr. Kazmer available
`for deposition because Dr. Kazmer has already been deposed once in this
`proceeding and once in the District Court litigation between the parties and
`because there will be no opportunity for Patent Owner to introduce
`Dr. Kazmer’s deposition testimony into these proceedings. Id.
`Inter partes review proceedings have always provided the opportunity
`for patent owners to introduce the deposition testimony of witnesses who
`submit declarations in support of petitioners’ replies. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,767–68 (Aug. 14, 2012) (“In the
`event that cross-examination occurs after a party has filed its last substantive
`paper on an issue, . . . [t]he Board may authorize the filing of observations to
`identify such testimony.”). In these proceedings, we expressly provided for
`such a motion for observations as part of the trial schedule. Paper 8, 5, 6, 8;
`Paper 10, 5, 7.
`The Board recently introduced a new update to the Office Patent Trial
`Practice Guide. 83 Fed. Reg. 39,989 (Aug. 13, 2018). In that update,
`motions for observation are replaced with sur-replies. Trial Practice Guide
`Update (August 2018) 14–15, available at https://www.uspto.gov/sites/
`default/files/documents/2018_Revised_Trial_Practice_Guide.pdf.
`Consistent with that update, Patent Owner here requested authorization to
`file Sur-Replies in these proceedings. Ex. 3001. We authorized Sur-Replies
`in lieu of motions for observations. Id.
`In our email authorizing Sur-Replies, we stated that the Sur-Replies
`“shall not be accompanied by any new evidence.” Id. That statement was in
`error. It appears that our error caused Petitioner to think that Patent Owner
`
`2
`
`
`
`IPR2017-01633 (Patent 6,866,812 B2)
`IPR2017-01647 (Patent 6,814,921 B1)
`would have no means to introduce any testimony resulting from any future
`deposition of Dr. Kazmer, which caused Petitioner to assume that
`Dr. Kazmer need not be made available for deposition. We did not intend
`this result.
`All “affidavit testimony prepared for [an inter partes review]
`proceeding” is subject to cross-examination. 37 C.F.R. § 42.51(b)(1)(ii).
`This includes affidavits and declarations prepared for submission with a
`Reply, as suggested by the need for motions for observations discussed
`above. The Trial Practice Guide Update substituting Sur-Replies for
`motions for observations did not repeal or revise Rule 42.51(b)(1)(ii).
`Accordingly, Dr. Kazmer’s reply declaration is still subject to cross-
`examination by deposition. The fact that Dr. Kazmer has already been
`subject to one deposition does not change this conclusion because his first
`deposition constituted only cross-examination of his first declaration, not the
`required cross-examination of his reply declaration. It is unclear to us why
`the additional fact that Dr. Kazmer also has been deposed in the related
`infringement litigation should affect this proceeding at all. Indeed, should
`Petitioner refuse to make Dr. Kazmer available for deposition in order to
`allow cross-examination of his reply declaration, we would be inclined to
`give his reply declaration very little, if any, weight.
`Accordingly, we order Petitioner to make Dr. Kazmer available for
`deposition. We leave the timing, length, and location of the deposition itself
`to the professional skill and good faith of the parties and their counsel.
`
`3
`
`
`
`IPR2017-01633 (Patent 6,866,812 B2)
`IPR2017-01647 (Patent 6,814,921 B1)
`It is
`ORDERED that Petitioner shall make Dr. David O. Kazmer available
`for the cross-examination by deposition of his reply declarations in both
`these proceedings; and
`FURTHER ORDERED that the parties shall agree on a reasonable
`start time, end time, and location for Dr. Kazmer’s deposition.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-01633 (Patent 6,866,812 B2)
`IPR2017-01647 (Patent 6,814,921 B1)
`
`PETITIONER:
`Alyssa Caridis
`Bas de Blank
`Donald Daybell
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`m2bptabdocket@orrick.com
`d2dptabdocket@orrick.com
`
`
`PATENT OWNER:
`Robert C. Mattson
`Vincent Shier
`Christopher Ricciuti
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketMattson@oblon.com
`CPDocketShier@oblon.com
`CPDocketRicciuti@oblon.com
`
`
`5
`
`
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