`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
` Paper 11
`Date: June 23, 2014
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00566
`Patent 6,038,295
`____________
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2014-00566
`Patent 6,038,295
`
`
`
`
`
`Introduction
`On June 20, 2014, a conference call was held. The participants of the call
`
`were respective counsel for the parties and Judges Lee, Gerstenblith, and Kokoski.
`Counsel for Patent Owner initiated the call to discuss an issue regarding routine
`discovery. According to counsel for Patent Owner, for a two-week period from
`June 2, 2014, through June 16, 2014, when he sought assistance from the Board by
`way of a request for a conference call, counsel for Petitioner was unavailable to
`discuss the matter because they were “in trial” for another litigation.
`Discussion
`Counsel for Petitioner did not dispute that they were unavailable during the
`
`two-week period referred to by counsel for Patent Owner. Also, counsel for
`Petitioner confirmed that they were unavailable because they were “in trial.”
`For inter partes review proceedings, even preliminary proceedings prior to
`
`institution of trial, time is of essence. There is not much time to spare, if any, if an
`issue arises and a party desires to discuss it with opposing counsel prior to seeking
`relief from the Board. Counsel’s being unavailable for two weeks is entirely
`unacceptable, especially when the event causing the “unavailability” is a planned
`absence. We expect counsel to respond to a discussion request within one business
`day or two, even if only to schedule the discussion within several more days, if
`acceptable to the party requesting the discussion. If lead counsel is unavailable, a
`backup counsel should step forward. If all counsel are unavailable for an extended
`period, there is a problem. Counsel for both parties are on notice that such conduct
`is sanctionable under 37 C.F.R. § 42.12(4).
`
`According to counsel for Patent Owner, Petitioner appears not to have
`satisfied the requirements of routine discovery under 37 C.F.R. § 42.51(b)(1)(iii),
`which requires production of relevant information that is inconsistent with the
`
`2
`
`
`
`
`
`
`IPR2014-00566
`Patent 6,038,295
`
`
`filing of documents and things that contain the inconsistency. Counsel for Patent
`Owner notes certain deposition testimony of Petitioner’s expert, in an earlier
`litigation involving Petitioner and in which U.S. Patent No. 6,038,295 was applied
`as prior art, that appears contrary to the declaration testimony of Petitioner’s expert
`in this proceeding regarding the disclosures of U.S. Patent No. 6,038,295.
`
`We directed the parties to engage in a meaningful and serious discussion
`pertaining to Patent Owner’s concern, and suggested that the Patent Owner
`communicate its basis for thinking that inconsistent information has not been
`disclosed by Petitioner. We authorize the Petitioner, based on any information
`provided by Patent Owner, to update its disclosure under the routine discovery
`requirements of 37 C.F.R. § 42.51(b)(1)(iii).
`Order
`
`It is
`
`ORDERED that the parties shall engage in a discussion of Patent Owner’s
`
`concerns regarding whether Petitioner has complied with the routine discovery
`requirements of 37 C.F.R. § 42.51(b)(1); and
`
`FURTHER ORDERED that by June 27, 2014, Petitioner shall make any
`additional disclosure, as necessary, to come in compliance with 37 C.F.R.
`§ 42.51(b)(1), and also file a statement by that date affirming that it is in
`compliance with the requirements of 37 C.F.R. § 42.51(b)(1).
`
`
`
`
`
`3
`
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`
`
`
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`4
`
`
`IPR2014-00566
`Patent 6,038,295
`
`For Petitioner:
`Heidi Keefe
`Mark R. Weinstein
`Andrew Mace
`hkeefe@cooley.com
`mweinstein@cooley.com
`amace@cooley.com
`
`
`
`For Patent Owner:
`Tarek N. Fahmi
`tarek.fahmi@ascendalaw.com
`
`Robert A. Whitman
`robert.whitman@mishcon.com
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