Paper 8
`Entered: October 24, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
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`DRAGON INTELLECTUAL PROPERTY, LLC.,
`Patent Owner.
`_______________
`
`Case IPR2014-01252
`Patent 5,930,444
`_______________
`
`Before NEIL T. POWELL, GREGG I. ANDERSON, and
`J. JOHN LEE, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`Order
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`

`
`IPR2014-01252
`Patent 5,930,444
`
`
`Introduction
`A conference call was held on October 23, 2014. The participants were
`Michael Kiklis and Katherine D. Cappaert on behalf of Unified Patents Inc.
`(“Petitioner”), Jason Angell on behalf of Dragon Intellectual Property, LLC
`(“Patent Owner”), and Judges Powell, Anderson, and Lee. The purpose of the call
`was to discuss which party would pay court reporter costs for a deposition of a
`corporate representative of Petitioner on the issue of real party in interest.
`The parties have engaged in prior discussion and negotiation concerning the
`deposition. Petitioner offered to make the witness available at the offices of Patent
`Owner’s counsel in California and pay the associated travel expenses. The parties
`agreed the deposition will take place on October 28, 2014. Patent Owner filed a
`Notice of Deposition on October 23, 2014 (Paper 7). The parties have reached an
`impasse as to who would pay the costs of the court reporter.
`Discussion
`We advised Patent Owner that its email communication requesting the
`conference call did not comply with our practice. In the future, any email from the
`parties requesting a conference with the Board shall fairly describe the essence of
`the dispute, providing the facts and authority that relate to the dispute, without
`attorney argument.
`Petitioner objects to the Notice of Deposition and argues that it includes
`substantial amounts of content exceeding what is provided in our rules. Under
`37 C.F.R. § 42.53(d)(5)(i) a notice for direct testimony must list: (A) The time and
`place of the deposition; (B) The name and address of the witness; (C) A list of the
`exhibits to be relied upon during the deposition; and (D) A general description of
`the scope and nature of the testimony to be elicited. We have reviewed the Notice
`of Deposition and it includes content beyond what is required by the rule.
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`Furthermore, page 1 of the Notice of Deposition indicates the deposition testimony
`will be recorded “at least stenographically.” To the extent this portion of the
`Notice of Deposition indicates the testimony may be videotaped, videotaping was
`not agreed to by the parties, as our rules require. See 37 C.F.R. § 42.53(a). During
`the conference, Patent Owner acknowledged the deposition would not be
`videotaped. The Notice of Deposition will be expunged from the record and Patent
`Owner may file a Notice of Deposition complying with our rules and the
`agreement of the parties.
`Patent Owner argues Petitioner should pay the costs associated with the
`deposition. Patent Owner further contends the burden is on Petitioner to establish
`it is the real party in interest and that it should bear the burden of costs, arguably as
`the proponent of the testimony. See 37 C.F.R. § 42.53(g). Petitioner responds that
`it has volunteered to produce the witness to allay any concerns Patent Owner may
`have that Petitioner is not the real party in interest. Petitioner has agreed to
`provide the witness at an agreed location, pay the costs associated with the
`appearance of both the witness and counsel, and to pay for a copy of the transcript
`of the deposition. As such, Petitioner has already assumed many of the costs that
`might be incurred under 37 C.F.R. § 42.53(g).
`The parties both represent that the only remaining cost at issue is the cost of
`a court reporter. The parties have demonstrated the ability to agree on procedural
`matters, as indicated by the scheduling of the deposition. Going forward, both
`parties are advised to, whenever possible, meet and confer on issues of
`disagreement before coming to the Board.
`We are not persuaded that, for purposes of 37 C.F.R. § 42.53(g), Petitioner is
`the proponent of the deposition testimony Patent Owner desires from the witness.
`Petitioner has represented in its Petition and during the conference that it has a
`good faith belief that it is the real party in interest. Pet. 2-4. Patent Owner seeks to
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`test that representation, and Petitioner has agreed to produce a witness on the
`issues involved. Patent Owner wants discovery on the issue and is taking the
`deposition to either confirm the representation of Petitioner or to contest it. We are
`mindful that Petitioner has already committed to incur the vast majority of the
`costs associated with the deposition. Accordingly, we use our discretion as it
`relates to administration of this proceeding and require Patent Owner to pay the
`costs of a court reporter. See 37 C.F.R. § 42.5(a) and (b).
`ORDER
`
`Accordingly, it is
`ORDERED that the Notice of Deposition (Paper 7) is expunged and Patent
`Owner may file a Notice of Deposition complying with our rules and the
`agreement of the parties; and
`FURTHER ORDERED that the costs of a court reporter associated with the
`taking of the deposition on October 28, 2014, will be paid by Patent Owner.
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`PETITIONER:
`
`Michael L. Kiklis
`Scott A. McKeown
`Katherine Cappaert
`OBLON SPIVAK
`cpdocketkiklis@oblon.com
`cpdocketmckeown@oblon.com
`CPdocketcappaert@oblon.com
`
`PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`FREITAS ANGELL & WEINBERG LLP
`rfreitas@fawlaw.com
`jangell@fawlaw.com
`
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