`Tel: 571-272-7822
`
`Paper 23
`Entered: October 8, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., MEDTRONIC VASCULAR, INC., AND
`MEDTRONIC COREVALVE, LLC,
`Petitioner,
`
`v.
`
`TROY R. NORRED, M.D.,
`Patent Owner.
`
`Case IPR21014-00110 and
`IPR2014-001111
`Patent 6,482,228 B1
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, BARRY L. GROSSMAN, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A conference call was conducted on October 7, 2014, during which
`counsel for Petitioner, Mr. Barufka, and counsel for Patent Owner, Mr.
`Marcus, appeared before Administrative Patent Judges Weatherly,
`Grossman, and Snedden. Petitioner initiated the call to obtain guidance
`
`1 We use this caption in this paper to indicate that this Order is to be entered
`in both trials. Nevertheless, the parties are not authorized to use this caption.
`
`
`
`IPR21014-00110 and
`IPR2014-00111
`Patent 6,482,228 B1
`
`regarding the form in which Patent Owner’s counsel was interposing
`objections to questions that were occurring during a deposition of an expert
`witness who appeared on behalf of Patent Owner. More specifically,
`Petitioner contended that Patent Owner’s objections were improper
`“speaking objections” as that term is used in the Office Patent Trial Practice
`Guide. The Office Patent Trial Practice Guide sets forth the standards by
`which the propriety of objections to questions during depositions are
`measured as follows:
`Consistent with the policy expressed in Rule 1 of the
`Federal Rules of Civil Procedure, and corresponding § 42.1(b),
`unnecessary objections, “speaking” objections, and coaching of
`witnesses
`in proceedings before
`the Board are strictly
`prohibited. Cross-examination testimony should be a question
`and answer conversation between the examining lawyer and the
`witness. The defending lawyer must not act as an intermediary,
`interpreting questions, deciding which questions the witness
`should answer, and helping the witness formulate answers
`while testifying.
`
`* * *
`3. An objection must be stated concisely in a non-
`argumentative and non-suggestive manner. Counsel must not
`make objections or statements that suggest an answer to a
`witness. Objections should be limited to a single word or term.
`Examples of objections that would be properly stated are:
`“Objection,
`form”;
`“Objection,
`hearsay”;
`“Objection,
`relevance”; and “Objection, foundation.”
` Examples of
`objections that would not be proper are: “Objection, I don’t
`understand the question”; “Objection, vague”; “Objection, take
`your time answering the question”; and “Objection, look at the
`document before you answer.” An objecting party must give a
`clear and concise explanation of an objection if requested by the
`party taking the testimony or the objection is waived.
`
`2
`
`
`
`IPR21014-00110 and
`IPR2014-00111
`Patent 6,482,228 B1
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14,
`2012).
`The court reporter at the deposition read back a portion of the
`transcript reflecting one example of Patent Owner’s objections to a question
`posed by Petitioner. Petitioner represented that the exemplary objection was
`representative of a number of objections interposed by Patent Owner and
`asked for an order preventing further interference with the deposition. The
`exemplary objection began, “Objection, misleading . . .” and then went on to
`explain at some length that the question was misleading because it asked for
`a conclusion from the witness based on only a portion of a patent that Patent
`Owner contends was “taken out of context.”
`We agree with Petitioner that the exemplary objection was improper
`under the guidelines set forth in the Practice Guide. We instructed Patent
`Owner’s counsel that the exemplary objection and those like them were
`improper and ordered Patent Owner’s counsel to cease such objections in the
`future. We also instructed Patent Owner’s counsel on the proper form of
`objections to questions during deposition proceedings before the Board. We
`cautioned Patent Owner’s counsel that further violations of the standards set
`forth in the Practice Guide may warrant sanctions including, but not limited
`to, exclusion of the primary declaration testimony from the witness being
`deposed.
`
`3
`
`
`
`IPR21014-00110 and
`IPR2014-00111
`Patent 6,482,228 B1
`
`ORDER
`
`For the reasons given, it is:
`ORDERED that Patent Owner’s counsel stop interposing objections
`that include argument or suggest answers to the witness according to the
`standards set forth in the Practice Guide as referenced above.
`
`4
`
`
`
`IPR21014-00110 and
`IPR2014-00111
`Patent 6,482,228 B1
`
`PETITIONER:
`
`Jack Barufka
`Evan Finkel
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`jack.barufka@pillsburylaw.com
`evan.finkel@pillsburylaw.com
`
`PATENT OWNER:
`
`James J. Kernell
`ERICKSON KERNELL DERUSSEAU & KLEYPAS, LLC
`jjk@kcpatentlaw.com
`
`David L. Marcus
`BARTLE & MARCUS LLC
`dmarcus@bmlawkc.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
