Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 22
`Entered: February 27, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`____________
`
`Cases
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`Paper 22
`Entered: February 27, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`
`____________
`
`Cases
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`
`
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`At Petitioner’s request, a conference call was held on February 23,
`
`2017, to discuss scheduling of cross-examination of Patent Owner’s expert
`witness, Mr. Stevick. Judges Kauffman, Petravick, and Weatherly were on
`the call as well as counsel for the parties.
`During the call, we reminded the parties that a request for a
`conference call should not contain substantive arguments. We also
`mentioned that while we will resolve disputes as needed, our hope is that
`ordinarily the parties will resolve matters, such as those at issue here,
`between themselves. See Paper 13 (resolving a scheduling dispute between
`the parties).1
`
`The dispute between the parties is the number of days and total hours
`of cross-examination of Mr. Stevick.2 Specifically, Petitioner seeks a total
`of eleven hours3 of cross-examination over a two-day period, while Patent
`Owner opposes, offering eight or nine hours4 on a single day.
`Regarding one day of testimony versus two, we find Patent Owner’s
`proposal of one day to be impractical. It would involve eight to nine hours
`of cross-examination, redirect, re-cross examination, and presumably a lunch
`break and other breaks. Such a lengthy day would be difficult for the
`witness, counsel, and the court reporter. Further, such a lengthy day would
`unfairly pressure Petitioner to shorten the process. Accordingly, the cross-
`examination should take place over two days.
`
`
`1 This order is Paper 13 in both proceedings.
`2 The parties have agreed that Mr. Stevick is available on March 9 at
`Berkley and March 15 in New Orleans.
`3 Seven hours for one proceeding and four for the second proceeding.
`4 Seven for the first proceeding and an additional one or two hours for the
`second proceeding.
`
`2
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`Before addressing the total hours of cross-examination, we provide
`some context. Although Mr. Stevick’s Declarations are similar, they differ
`in that each addresses three claim terms not addressed in the other, and in
`that the analysis is tailored to the challenged claims of each patent. See
`Ex. 2002.5 The cases overlap in other respects (e.g., the Specifications and
`most of the prior art involved), but differ at least in that each patent has
`different challenged claims and in that IPR2016-00948 involves a prior art
`reference (Oelsch) not relied upon in the other proceeding.
`Absent stipulation otherwise by the parties or an order by the Board,
`cross-examination of a witness is limited to seven hours for a single
`proceeding. See 37 C.F.R. § 42.53(c)(2). In asking for an additional four
`hours of cross-examination for the second proceeding rather than the full
`seven hours, Petitioner acknowledges that the two proceedings overlap with
`regard to the Specifications and Mr. Stevick’s Declarations, but emphasizes
`that the proceedings differ with regard to the challenged claims.
`In seeking to limit Petitioner to one or two hours for the second
`proceeding, Patent Owner emphasizes the small differences between
`Mr. Stevick’s Declarations in each case, and cites to purportedly supporting
`Board orders.
`Patent Owner does not effectively address the differences between the
`Declarations, and does not effectively counter Petitioner’s point that the
`challenged claims in each proceeding differ.
`Further, the orders cited by Patent Owner do not support Patent
`Owner’s contentions because the outcomes are consistent with our
`
`
`5 The Declarations are filed as Ex. 2002 in each proceeding.
`
`3
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`determination here. For example, one order cited by Patent Owner dealt
`with the amount of cross-examination for three related proceedings in which
`the witness at issue had submitted an identical 14-page reply declaration in
`each case. Husky Injection Molding Systems LTD, et al. v. Plastics
`Engineering & Technical Systems, Inc., Case IPR2016-00431, slip op. at 3
`(PTAB Dec. 14, 2016) (Paper 21). There, the patent owner requested a total
`of 21 hours of cross-examination of the witness (seven hours for each of
`three cases), petitioner opposed, requesting seven hours total, and the Board
`permitted 11 hours of cross-examination. Id. at 3–4. While the proceedings
`at hand involve two cases instead of three, this difference is counterbalanced
`by the fact that the proceedings at hand involve a longer submission by the
`witness that was not identical in each of the related proceedings.
`
`4
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`Accordingly, it is ORDERED that Petitioner shall have up to 11 hours
`for the cross-examination (by deposition) of Mr. Stevick to be allocated as
`the parties agree over a two-day period.
`
`5
`
`
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`
`PETITIONER:
`Joshua Harrison
`josh@bhiplaw.com
`
`Reynaldo Barcelo
`rey@bhiplaw.com
`
`PATENT OWNER:
`Ehab Samuel
`ESamuel@manatt.com
`
`Danielle Mihalkanin
`DMihalkanin@manatt.com
`
`
`
`
`
`
`6
`
`
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