Paper 32
`
`Entered: December 14, 2015
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COALITION FOR AFFORDABLE DRUGS II LLC,
`Petitioner,
`
`v.
`
`NPS PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2015-00990 and IPR2015-01093
`(Patent 7,056,886 B2)1
`_______________
`
`Before JACQUELINE WRIGHT BONILLA and SHERIDAN K. SNEDDEN,
`Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
` 1
`
` This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The parties
`are authorized to use this style heading when filing a single paper in each
`proceeding, provided that such heading includes a footnote attesting that “the
`word-for-word identical paper is filed in each proceeding identified in the
`heading.”
`
`
`
`
`
`Entered: December 14, 2015
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COALITION FOR AFFORDABLE DRUGS II LLC,
`Petitioner,
`
`v.
`
`NPS PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2015-00990 and IPR2015-01093
`(Patent 7,056,886 B2)1
`_______________
`
`Before JACQUELINE WRIGHT BONILLA and SHERIDAN K. SNEDDEN,
`Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
` 1
`
` This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The parties
`are authorized to use this style heading when filing a single paper in each
`proceeding, provided that such heading includes a footnote attesting that “the
`word-for-word identical paper is filed in each proceeding identified in the
`heading.”
`
`
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`
`In an email correspondence sent to the Board on December 9, 2015,
`
`counsel for Patent Owner requested a conference call seeking guidance
`
`regarding the Board’s Testimony Guidelines in relation to a deposition
`
`dispute. The relevant portion of the email reads as follows:
`
`
`
`
`
`These IPRs concern the same patent but different groups of
`claims. However, all challenged claims are related.
`
`Petitioner presented two declarations of the same expert which
`are similar in content in the parallel IPRs. Patent Owner noticed
`cross-examination of the expert in each IPR. Because of the
`extensively overlapping subject matter of the declarations, Patent
`Owner suggested one deposition for 10 hours instead of 2
`depositions of 7 hours each. In the alternative, Patent Owner
`would like to be able to rely upon both cross examinations in
`both IPRs where relevant.
`
`Either of these procedures would eliminate asking the same
`questions twice, once in the first deposition and again in the
`second. It would also eliminate the possibility for the witness to
`be coached by counsel on the questions that would need to be re-
`asked the second day of the depositions. It would also eliminate
`the need for the Board to study two cross examinations of the
`same witness on common subject matter on the same patent and
`to review possibly conflicting testimony from different days
`from the same witness. Dividing the cross-examinations into
`two separate, duplicative sessions defeats the purpose of cross-
`examination.
`
`A telephone conference was held among respective counsel for the
`
`parties and Judges Snedden and Bonilla on December 9, 2015. During the
`
`teleconference, Patent Owner noted that the two present cases involve the
`
`same patent, same witness, and, as a result, involve a significant overlap in
`
`subject matter. Patent Owner expressed concerned that, under these
`
`circumstances, having two separate depositions of the same witness in
`
`2
`
`
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`
`IPR2015-00990 and IPR2015-01093 creates an opportunity for inappropriate
`
`discussions to occur during the time between depositions. Patent Owner thus
`
`requested one deposition for 10 hours instead of two depositions of 7 hours
`
`each. In the alternative, Patent Owner requested allowance to rely upon either
`
`transcript of the deposition in either case.
`
`Petitioner requested that the depositions for IPR2015-00990 and
`
`IPR2015-01093 be treated separately in the two cases. Petitioner noted that
`
`the cases involved different claims of the subject patent and have not been
`
`consolidated.
`
`During the teleconference, we provided the parties with verbal
`
`guidance indicating that, in the absence of an agreement to the contrary, our
`
`default rules apply. For the convenience of the parties, additional guidance
`
`regarding the taking of testimony is provided below.
`
`37 C.F.R. § 42.53(c)(1) governs the duration of testimony, which
`
`provides as follows:
`
`Unless stipulated by the parties or ordered by the Board, direct
`examination, cross-examination, and redirect examination for
`compelled deposition
`testimony shall be subject
`to
`the
`following time limits: Seven hours for direct examination, four
`hours for cross-examination, and two hours for redirect
`examination.
`
`Furthermore, Testimony Guidelines are set forth in Appendix D of the Office
`
`Patent Trial Practice Guide. See 77 Fed. Reg. 48756, 48772-48773 (Aug. 14,
`
`2012).
`
`In the absence of any agreement between the parties, depositions for a
`
`same witness in IPR2015-00990 and IPR2015-01093 shall occur separately
`
`and each for the time allotted in § 42.53(c)(1). The parties, however, may
`
`rely upon either deposition transcript in either case.
`
`3
`
`
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`
`The Testimony Guidelines state that “[o]nce the cross-examination of a
`
`witness has commenced, and until cross-examination of the witness has
`
`concluded,” counsel may not, for example, “suggest to the witness the manner
`
`in which any questions should be answered.” Id. at 48772 The prohibition
`
`of conferring with the witness ends once cross-examination concludes in each
`
`case. The prohibition does not exist during the time frame between the end of
`
`the cross-examination in the first case and the beginning of cross-examination
`
`is the second case.
`
`In consideration of the foregoing, it is hereby
`
`ORDERED that, in the absence of any agreement between the parties,
`
`37 C.F.R. § 42.53 governs the taking of testimony and the depositions for
`
`IPR2015-00990 and IPR2015-01093 shall occur separately; and
`
`FURTHER ORDERED that the parties may rely upon a transcript of a
`
`deposition taken in IPR2015-00990 or IPR2015-01093 in either case.
`
`
`
`4
`
`
`
`
`
`
`
`IPR2015-00990 and IPR2015-01093
`Patent 7,056,886 B2
`
`
`
`
`
`For PETITIONER:
`
`Jeffrey D. Blake
`Matthew L. Fedowitz
`MERCHANT & GOULD P.C.
`jblake@merchantgould.com
`mfedowitz@merchantgould.com
`
`For PATENT OWNER:
`
`Joseph R. Robinson
`Heather Morehouse Ettinger
`Dustin B. Weeks
`TROUTMAN SANDERS LLP
`joseph.robinson@troutmansanders.com
`heather.ettinger@troutmansanders.com
`dustin.weeks@troutmansanders.com
`
`5
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