`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
`
`