Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 21
`
`Entered: March 19, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner,
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner.
`____________
`
`Case CBM2012-00003 (JL)
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On March 18, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Chang, and Zecher.
`Mr. James Myers, admitted pro hac vice, and Mr. Steven Baughman
`
`
`571-272-7822
`
`
`
` Paper 21
`
`Entered: March 19, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner,
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner.
`____________
`
`Case CBM2012-00003 (JL)
`Patent 8,140,358
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On March 18, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Chang, and Zecher.
`Mr. James Myers, admitted pro hac vice, and Mr. Steven Baughman
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`appeared for petitioner (Liberty), Messrs. Calvin Griffith, James Wamsley,
`and John Biernacki appeared for patent owner (Progressive). Progressive
`initiated the conference call to discuss Liberty’s desire to have Progressive
`combine the cross examination of Liberty’s technical witness Scott Andrews
`in all three CBM2012-00002, CBM2012-00003, and CBM2012-00004, and
`perhaps also CBM2013-00004, in a single deposition, for cost savings,
`convenience, and enhanced efficiency. The parties also had unresolved
`differences about (1) the location of the cross examination of Scott Andrews,
`(2) the duration of the cross-examination in a combined deposition, and (3)
`Progressive’s desire to videotape the cross examination of Scott Andrews.
`Progressive’s counsel expressed a general willingness to combine its
`cross examination of Scott Andrews, but only if the expiration date for Time
`Period 1 (DUE DATE 1) for filing of patent owner’s response in CBM2012-
`00003 is postponed. As set forth in the respective Scheduling Orders, Time
`Period 1 is currently set in CBM2012-00003 to expire on April 12, 2013, in
`CBM2012-00002 and CBM2012-00004 to expire on April 25, 2013, and in
`CBM2013-00004 to expire on May 29, 2013. The respective times are
`different because CBM2012-00003 was instituted on February 12, 2013,
`CBM2012-00002 and CBM2012-00004 were instituted on January 25, 2013,
`and CBM2013-00004 was instituted on March 15, 2013.
`Liberty’s counsel offered to extend Time Period 1 in CBM2012-
`00003 to allow sufficient preparation time for Progressive to take a single
`cross examination of Scott Andrews for CBM2012-00002, CBM2012-
`00003, CBM2012-00004, and possibly CBM2013-00004. Liberty’s counsel
`
`2
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`was asked by the judges whether Liberty is offering some of its own reply
`time in Time Period 2 which expires on DUE DATE 2 for use by
`Progressive in Time Period 1. In response, counsel for Liberty proposed to
`work with counsel for Progressive to stipulate to different dates for DUE
`DATES 1 through 3 (earlier or later, but no later than DUE DATE 4) as
`authorized in the Scheduling Orders, for CBM2012-00002, CBM2012-
`00003, CBM2012-00004, and possibly CBM2013-00004, to accommodate
`and enable a single combined cross examination of Scott Andrews.
`With regard to the location of the cross examination, Liberty offered
`to make Scott Andrews available for cross examination at the office of
`Liberty’s counsel in Chicago, the same city where the office of Progressive’s
`counsel is located. The judges explained to counsel for Progressive that
`Liberty’s proposal was reasonable and Liberty has no obligation to provide
`Scott Andrews for cross examination at the office of Progressive’s counsel.
`With regard to setting a maximum number of hours for any combined
`cross examination of Scott Andrews, the judges informed counsel for
`Liberty that there is no good reason to set such a maximum number of hours
`in advance. The combined cross examination is expected to take more time
`than any single non-combined cross examination, but less than all the
`individual cross examination times combined. The judges do not want to be
`speculative at this time. However, counsel for both parties were informed
`that if repetitive questioning becomes a problem, either party may call the
`Board during cross examination to seek a resolution of the issue at that time.
`
`3
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`With regard to Progressive’s request to make a video recording of the
`cross examination of Scott Andrews, counsel for Progressive explained that
`Progressive will pay for all costs associated with video recording and that
`the content of the deposition transcript will be mapped to specific locations
`on the recorded video such that corresponding video to any portion of the
`deposition transcript will be easily locatable. The judges informed counsel
`for the parties that if video recording is permitted, the parties should call to
`the judges’ attention only those “exceptional” moments which have
`“special” significance to the demeanor of the witness, and that the Board
`may decide not to review any portion of the recorded video. By providing
`the video recording, Progressive is only preserving an opportunity for the
`Board to review the recorded video.
`It is
`ORDERED that the parties may stipulate to different DUE DATES
`1-3 without changing DUE DATES 4-7, to enable a single cross
`examination of Scott Andrews in CBM2012-00002, CBM2012-00003,
`CBM2012-00004, and possibly CBM2013-00004;
`FURTHER ORDERED that Liberty need not provide Scott Andrews
`at the office of Progressive’s counsel but may provide the witness in the
`office of its own counsel;
`FURTHER ORDERED that at its own cost, Progressive may record
`a video of the cross examination of Scott Andrews and submit the same as
`an exhibit in this case. See 37 C.F.R. § 42.53(a).
`
`
`4
`
`
`
`Case CBM2012-00003
`Patent 8,140,358
`
`PETITIONER:
`
`J. Steven Baughman
`Nicole M. Jantzi
`Ropes & Gray
`Email: steven.baughman@ropesgray.com
`Email: Nicole.jantzi@ropesgray.com
`
`PATENT OWNER:
`
`Calvin P. Griffith
`James L. Wamsley, III
`John V. Biernacki
`Jones Day
`Email: cpgriffith@jonesday.com
`Email: jlwamsleyiii@jonesday.com
`Email: jvbiernacki@jonesday.com
`
`
`5
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