Trials@uspto.gov
`571-272-7822
`
`Paper 48
`Entered: September 29, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and HULU, LLC,
`Petitioner,
`
`v.
`
`DIVX, LLC,
`Patent Owner.
`____________
`
`IPR2020-00614
`Patent 7,295,673 B2
`____________
`
`Before MONICA S. ULLAGADDI and IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 48
`Entered: September 29, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and HULU, LLC,
`Petitioner,
`
`v.
`
`DIVX, LLC,
`Patent Owner.
`____________
`
`IPR2020-00614
`Patent 7,295,673 B2
`____________
`
`Before MONICA S. ULLAGADDI and IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`IPR2020-00614
`Patent 7,295,673 B2
`
`
`
`
`
`BACKGROUND
`I.
`On September 24, 2021, a conference call was held among counsel for
`Petitioner, counsel for Patent Owner, and Judges Gerstenblith, Ullagaddi,
`and Ahmed. Petitioner filed a transcript of the call (Ex. 1036, “Tr.”).
`During the call, Petitioner updated the panel as to the availability of its
`declarant, Dr. Patrick McDaniel. See Paper 44 (order requesting update);
`Ex. 3001 (emails of September 22, 2021 from the parties). Dr. McDaniel
`provided a Reply Declaration (Ex. 1019) accompanying Petitioner’s Reply
`(Paper 31), both of which were filed on July 23, 2021. Petitioner confirmed
`that Dr. McDaniel is unable to sit for deposition due to his serious medical
`condition. Petitioner informed us that it had retained a different declarant,
`Dr. James Storer, who is prepared to adopt Dr. McDaniel’s testimony from
`Dr. McDaniel’s Reply Declaration and is willing and available to be deposed
`on the same. Tr. 3:22–4:10. When questioned as to whether Dr. Storer
`would adopt testimony from Dr. McDaniel’s Declaration (Ex. 1003 (“First
`Declaration”)) that accompanied the Petition, Petitioner indicated that Dr.
`Storer would only adopt portions of the First Declaration that were cited in
`the Reply Declaration. Id. at 4:1–6:25.
`Patent Owner explained that it had not yet received Dr. Storer’s
`curriculum vitae and thus, that it would not be able to adequately prepare on
`an expedited basis to depose Dr. Storer on his expertise as well as the
`positions taken in his prior opinions or publications. Id. at 8:8–24, 9:16–22.
`Patent Owner argued that it would be improper to substitute an expert at this
`stage and requested authorization to file a motion to strike Petitioner’s Reply
`Declaration. Id. at 9:7–10, 12:5–11. First, Patent Owner argued that
`“Petitioner was required to include all of its prima facia evidence as well as
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`IPR2020-00614
`Patent 7,295,673 B2
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`any of the evidence it could have produced with the petition in its original
`Declaration. So the Reply Declaration is therefore not necessary for their
`case in chief.” Id. at 12:18–24. Second, Patent Owner argued that if
`“Petitioner’s Reply Declaration is stricken, both parties, Petitioner and
`Patent Owner, would essentially be in a similar position. Both parties have
`submitted . . . their main briefs supported by an expert and both parties have
`a reply that is not supported by an expert.” Id. at 13:10–16. Third, Patent
`Owner argued that “Dr. Storer will not be able to answer why Dr. McDaniel
`chose to respond to certain arguments but not others in his Reply
`Declaration.” Id. at 14:15–18; see id. at 14:20–15:10 (citing IPR2020-
`00558, Paper 50 at 21 n.5). Fourth, Patent Owner argued that, even though
`Dr. Storer may adopt the Reply Declaration testimony, “the new expert is
`not really bound on what opinions he may provide at his deposition.” Id. at
`15:25–16:3. Fifth, Patent Owner expressed concerns as to timing, with
`respect to the potential for Petitioner to seek to extend the stay issued in co-
`pending district court litigation if a new expert is substituted and this
`proceeding is delayed, and with respect to the compressed timeline that
`would result from such substitution, if the present proceeding is not delayed.
`Id. at 16:14–17:11.
`Patent Owner requested that, if the Board did allow substitution of
`Petitioner’s declarant at this stage, it be allowed to file new exhibits with its
`sur-reply. Id. at 10:1–25.
`Petitioner responded that it had presented supporting case law for
`authorizing substitution of an expert with a medical condition and that Patent
`Owner had cited no case law that supports its contention that the Reply
`Declaration should be stricken. Id. at 18:24–19:10. Petitioner indicated that
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`IPR2020-00614
`Patent 7,295,673 B2
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`it would not oppose allowing exhibits to Patent Owner’s sur-reply, as long as
`they are “deposition exhibits with Dr. Storer that are specific to Dr. Storer,”
`for example “his book or his CV, something [that is] specific to him.” Id. at
`19:11–16, 19–20. Petitioner argued that it would be “nonsensical” to require
`Dr. Storer to adopt Dr. McDaniel’s testimony from his First Declaration. Id.
`at 19:23–20:5. Petitioner also argued that Patent Owner had not raised its
`prejudice arguments during their “meet and confers.” Id. at 22:16–24.3.
`Petitioner expressed concerns with the metes and bounds of any exhibits to
`be filed with Patent Owner’s sur-reply. Id. at 19:11–16.
`We have reviewed the cases presented by Petitioner including: Apple,
`Inc. v. Qualcomm Inc., IPR2018-01279 (“Apple”), Moderna Therapeutics,
`Inc. v. Arbutus Biopharma Corporation, IPR2019-00554, Paper 25 (PTAB
`Mar. 12, 2020) (“Moderna”), and Universal Remote Control v. Universal
`Electronics, IPR2014-01106 (“Universal”). We have also reviewed the
`cases presented by Patent Owner, Netflix, Inc. and Hulu, LLC v. DivX, LLC,
`IPR2020-00052, Netflix, Inc. and Hulu, LLC v. DivX, LLC, IPR2020-00646,
`and Netflix, Inc. and Hulu, LLC v. DivX, LLC, IPR2020-00558.
` In Apple, Dr. Cooperstock was substituted in place of Dr. Mandayam
`(Apple, Paper 34) after Dr. Mandayam’s Reply Declaration (id. at Paper 32)
`was filed in light of Dr. Mandayam’s wife’s serious medical condition (id. at
`Paper 33). In Moderna, Petitioner’s expert, Dr. Janoff, passed away before
`providing a reply declaration. Moderna, Paper 25 at 2. As such, Petitioner
`engaged a replaced expert, Dr. Thomas Anchordoquy, to provide a reply
`declaration. Id. In Universal, Petitioner’s first expert, Dr. Bristow, provided
`a First Declaration (Universal, Paper 1 at v (citing Ex. 1011)), and a second
`expert, Dr. Gafford, provided a Reply Declaration (id., Paper 20 at ii (citing
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`IPR2020-00614
`Patent 7,295,673 B2
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`Ex. 1036)).
`Only in Apple do the facts show that an expert was substituted after
`the filing of a petitioner’s reply. The cases cited by Patent Owner do not
`address the substitution of an expert, but rather, the substance of Petitioner’s
`reply declarations in other proceedings. Similarly, Patent Owner’s first and
`second arguments go to whether a petitioner needs a reply declaration to
`make their case, not why they would be prejudiced by the substitution of
`Dr. Storer. We understand, however, Patent Owner’s concerns presented in
`its third, fourth, and fifth arguments. With respect to Patent Owner’s fourth
`argument, we note that it is not possible to know how much, if at all, Dr.
`Storer’s deposition testimony will deviate from the opinions provided in Dr.
`McDaniel’s Reply Declaration and as such, it is not possible to know how
`much or whether Patent Owner might be prejudiced for the reasons set forth
`in its fourth argument. We do, however, acknowledge prejudice with
`respect to the compressed timeline that Patent Owner must now adhere to.
`We further acknowledge the prejudice of not being able to fully depose
`Dr. Storer on why Dr. McDaniel addressed matters in a certain way, instead
`of another way.
`On balance, Patent Owner’s concerns that it will be prejudiced by the
`substitution of Dr. Storer at this late stage do not outweigh the prejudice to
`Petitioner that would result from the significant measure of striking the
`entire Reply Declaration without allowing Petitioner to substitute its
`declarant. As Petitioner was able to find a declarant that is willing to adopt
`Dr. McDaniel’s reply testimony, we allow the substitution of Dr. Storer.
`Following our conference call, Petitioner filed the Reply Declaration from
`Dr. Storer along with his curriculum vitae (Ex. 1035) and Patent Owner will
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`IPR2020-00614
`Patent 7,295,673 B2
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`be given sufficient opportunity to review Dr. Storer’s opinions and prior
`publications as well as to depose Dr. Storer after which Patent Owner may
`object to his testimony, and may seek authorization for a motion to strike at
`that time. Patent Owner may file exhibits with its sur-reply, but this is not a
`blanket authorization for any and all exhibits. Petitioner may file objections
`to these exhibits under 37 C.F.R. § 42.64(b)(1). Oral argument will be
`rescheduled to Wednesday, November 10, 2021 at 1PM EDT. We have
`therefore mitigated the prejudice to Patent Owner by: (1) providing extra
`time for Patent Owner to prepare for a deposition and extending the deadline
`for filing a sur-reply; (2) authorizing Patent Owner to file necessary exhibits
`with a sur-reply; and (3) extending the date for oral arguments to a date that
`is Patent Owner’s “very strong preference.” Tr. 33:7–10.
`Due dates 3, 5, 6, 7, and 8 set forth in our Scheduling Order (Paper 14,
`9) are vacated. Due date 3, the deadline for filing Patent Owner’s sur-reply,
`is extended to October 20, 2021. We direct the parties to file a joint
`stipulation as to due dates 5, 6, and 7. If the parties are unable to reach
`agreement as to these due dates, the parties are directed to contact the Board.
`With the exception of changing oral arguments to November 10, 2021, and
`changing the deadline to file the demonstratives with the Board to no later
`than November 4, 2021, our Oral Hearing Order (Paper 41) will still apply to
`the present proceeding.
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`IPR2020-00614
`Patent 7,295,673 B2
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`
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`II. ORDER
`In view of the foregoing, it is:
`ORDERED that Due Dates 3, 5, 6, and 7 as set forth in the Scheduling
`Order (Paper 14, 9) are vacated and the parties are directed to file a joint
`stipulation as to new, agreed-upon Due Dates 5, 6, and 7;
`
`
`
`FURTHER ORDERED that Due Date 3, the deadline for filing Patent
`Owner’s sur-reply to Petitioner’s reply, is now October 20, 2021;
`FURTHER ORDERED that Due Date 8, the previously-scheduled
`date of oral arguments, October 5, 2021, is vacated and oral arguments will
`now be heard on November 10, 2021 at 1 PM EDT;
`
`FURTHER ORDERED that Dr. Storer will be made available for
`deposition in place of Dr. McDaniel; and
`
`FURTHER ORDERED that Patent Owner may file exhibits with its
`Patent Owner sur-reply.
`
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`IPR2020-00614
`Patent 7,295,673 B2
`
`For PETITIONER:
`Harper Batts
`Chris Ponder
`Jeffrey Liang
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`jliang@sheppardmullin.com
`
`
`For PATENT OWNER:
`Kenneth Weatherwax
`Bridget Smith
`Flavio Rose
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`smith@lowensteinweatherwax.com
`rose@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`
`8
`
`
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