Gravois, Robert
`
`From:
`
`Sent:
`To:
`Cc:
`Subject:
`
`Vignone, Maria <Maria.Vignone@USPTO.GOV> on behalf of Trials
`<Trials@USPTO.GOV>
`Friday, October 24, 2014 10:08 AM
`Crain, Andrew; Trials
`areister@cov.com; gdischer@cov.com; Gravois, Robert; Knox, Kenny
`RE: Conference Call Request IPR 2014-00717 & IPR 2014-00735
`
`Counsel: 
` 
`The panel provides the following guidance.  “The panel does not believe a conference is necessary at this time.  The order 
`of October 2, 2014 in IPR2014‐00717 and IPR2014‐00735 granted in part Patent Owner’s motion for additional discovery 
`by ordering Petitioner to answer interrogatories and produce documents as specified in the order.  The order does not 
`require that Petitioner make Mr. Cho available for cross‐examination.” 
` 
`Thank you, 
`
` Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571‐272‐4645
`
`   
`
`From: Crain, Andrew [mailto:Andrew.Crain@thomashorstemeyer.com]
`Sent: Tuesday, October 21, 2014 5:52 PM
`To: Trials
`Cc: areister@cov.com; gdischer@cov.com; Gravois, Robert; Knox, Kenny
`Subject: Conference Call Request IPR 2014-00717 & IPR 2014-00735
` 
`Dear PTAB Staff:
`
` I
`
` am counsel for Patent Owner Black Hills Media in Case Nos. IPR2014-00717 and IPR2014-00735. These proceedings
`are assigned to Judges McNamara, McKone, Chen, and Ippolito. Petitioner’s counsel is copied on this email. Patent
`Owner also certifies that the parties have met and conferred on this issue and that the general substance of this email
`was previously vetted with Petitioner.
`
`Patent Owner requests a conference with the Board relating to a request to cross-examine Declarant Sungil Cho with
`respect to his declaration previously submitted in these proceedings. Specifically, in Petitioner’s Opposition to Motion for
`Additional Discovery (Paper 16 in each IPR), Petitioner submitted a declaration from Mr. Sungil Cho (Ex. 1009 in each
`IPR). In the Order Granting-in-Part Patent Owner’s Motion for Additional Discovery (the Order), the Order indicates that
`Patent Owner is “entitled … to cross-examine Mr. Cho.” Paper No. 17 in each IPR at p. 4.
`
`The parties appear to have a disagreement about whether Patent Owner can depose Mr. Cho in regard to his declaration
`in view of Paper 17. In response to Patent Owner’s request, Petitioner indicated that it is not required to make Mr. Cho
`available for cross-examination. Patent Owner understands Petitioner to contend that it is not required to make Mr. Cho
`available for deposition because it was not explicitly ordered by the Board in Paper 17 and, thus, would be additional
`discovery that Patent Owner would have to request and obtain.
`
`Therefore, the parties respectfully request a conference with the Board to seek guidance on this issue. The above
`description is not intended to be presented as a motion, brief, or argument, but is merely intended to constitute a general
`outline of the disagreement for the benefit of the Board.
`
`
`1
`
`BHM 2010
`
`

`
`For scheduling purposes, the parties are available on Thursday, October 23 from 1:30PM-2:30PM EDT; Friday, October
`24 from 10:00AM-5:00PM; and Tuesday, October 28 10:00AM-3:00PM EDT.
`
`
`
`
` Andrew Crain
` Partner
`
`
` 400 Interstate North Parkway SE
` Suite 1500
` Atlanta, Georgia 30339-5029
` Phone: (770) 933-9500
` Fax: (770) 951-0933
` thomashorstemeyer.com
`
`
`Confidentiality Notice: This e-mail message and any attachments are intended only for the use of those to whom it is
`addressed and may contain information that is confidential and prohibited from further disclosure under law. If you have
`received this e-mail message in error, its review, use, retention, and/or distribution is strictly prohibited. If you are not the
`intended recipient, please contact the sender by reply e-mail message and destroy all copies of the original message and
`any attachments. 
`
`2