Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 19
`Entered: December 12, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`
`
`
`Cases
`CBM2014-00102 (Patent 8,118,221 B2)1
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`Tel: 571-272-7822
`
`Paper 19
`Entered: December 12, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`
`
`
`Cases
`CBM2014-00102 (Patent 8,118,221 B2)1
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`
`On December 11, 2014, a conference call was held between counsel
`
`for Petitioner, counsel for Patent Owner, and Judges Bisk and Clements.
`
`Petitioner requested the call during the deposition of its expert, Mr. Anthony
`
`J. Wechselberger, because it objected to the scope of questioning by Patent
`
`Owner’s counsel.
`
`Specifically, Petitioner asked the Board to order Patent Owner to not
`
`ask questions involving the operation of Petitioner’s products. Petitioner
`
`argued that (1) the operation of Petitioner’s products is outside the scope of
`
`these proceedings; (2) Mr. Wechselberger has not opined on the operation of
`
`Petitioner’s products in these proceedings; and (3) secondary considerations
`
`is not yet an issue in this proceeding.
`
`Patent Owner argued that it is entitled to inquire into the operation of
`
`Petitioner’s products because (1) it believes they embody the claims
`
`challenged in this proceeding; (2) Mr. Wechselberger has submitted in the
`
`co-pending litigation expert reports opining on Petitioner’s products; and
`
`(3) the operation of Petitioner’s products is relevant to the commercial
`
`success of Patent Owner’s patents, as Patent Owner intends to argue in its
`
`Patent Owner Response.
`
`“For cross-examination testimony, the scope of the examination is
`
`limited to the scope of the direct testimony.” 37 C.F.R. 53(d)(5)(ii). Here,
`
`Mr. Wechselberger’s direct testimony is in the form of a declaration filed
`
`with the Petition. The parties are reminded that the Testimony Guidelines
`
`appended to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,772 (Aug. 14, 2012) (Appendix D), also apply to this proceeding. The
`
`Board may impose an appropriate sanction for abuse of discovery, including
`
`2
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`failure to adhere to the Board’s rules governing taking testimony and the
`
`Testimony Guidelines. 37 C.F.R. § 42.12. For example, reasonable
`
`expenses and attorneys’ fees incurred by any party may be levied on a
`
`person who impedes, delays, or frustrates the fair examination of a witness.
`
`We declined to order Patent Owner’s counsel to cease its questioning
`
`with respect to the operation of Petitioner’s products. As we explained
`
`during the call, however, the Board is extremely reluctant to broaden the
`
`scope of the instant proceedings significantly and delay the trial schedule by
`
`permitting discovery into the operation of Petitioner’s products. In order to
`
`be relevant to our analysis of commercial success, the discovery would
`
`require a trial within a trial on the issue of infringement, with associated
`
`evidence, arguments, and (potentially) declarants from Patent Owner, and
`
`then the same from Petitioner in response. This is contrary to the goal of
`
`covered business method review to be an efficient, streamlined alternative to
`
`litigation, completed within one year of institution. See 35 U.S.C.
`
`§ 326(a)(11). With these issues in mind, we denied Patent Owner’s request
`
`for authorization to file a Motion for Additional Discovery on Petitioner’s
`
`products. CBM2014-00102, Paper 14.2 Patent Owner now attempts to elicit
`
`information through deposition that was denied to it as additional discovery.
`
`In view of the foregoing, we authorize Petitioner to file a Motion to
`
`Strike in which Petitioner should identify questions and answers in the
`
`transcript of the deposition, and explain why those questions are outside the
`
`proper scope of this proceeding. As we explained during the call, if we are
`
`2 CBM2014-00102 is representative. An identical Order was filed in
`CBM2014-00106, CBM2014-00108, and CBM2014-00112.
`
`3
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`persuaded that Patent Owner’s counsel sought information outside the
`
`proper scope of this proceeding, sanctions may include striking the questions
`
`and answers that are not relevant, and ordering Patent Owner to pay the
`
`costs associated with the deposition.
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that Petitioner is authorized to file a Motion to Strike; and
`
`FURTHER ORDERED that Petitioner is authorized to file the
`
`deposition transcript of Mr. Wechselberger as confidential, accompanied by
`
`a public, redacted, version of the transcript, and a motion to seal (37 C.F.R.
`
`§ 42.14) containing a proposed protective order (37 C.F.R. § 42.54).
`
`4
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
