`Trials@uspto.gov
`571-272-7822 Entered: April 19, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01198
`Patent 9,179,005 B2
`Case IPR2016-01201
`Patent 8,542,815 B2
`____________
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01198, -01201
`Patent 9,179,005 B2
`Patent 8,542,815 B2
`
`A telephone conference was held on April 18, 2017 before Judges
`Benoit, Pettigrew, and Margolies. Adam Seitz and Paul Hart appeared on
`behalf of Apple Inc. (“Petitioner”) and Kerry Taylor appeared on behalf of
`Voip-Pal.com, Inc. (“Patent Owner”). The purpose of the telephone
`conference was to address the dispute set forth in an email from Mr. Seitz
`dated April 12, 2017 to the Board regarding an instruction not to answer a
`question at a deposition. According to Patent Owner’s counsel, the dispute
`arose after the close of business for the Board and it was not possible to
`engage the Board in resolving the dispute prior to the close of the deposition.
`Specifically, the dispute arose during the March 29, 2017 deposition
`of one of the named inventors of the challenged patents who submitted a
`declaration in the above-referenced inter partes reviews. During that
`deposition, Petitioner’s counsel asked the witness for another named
`inventor’s telephone number, which was contained in an address book the
`witness had with him at the deposition. Patent Owner’s counsel instructed
`the witness not to answer the question because it was “outside the scope” of
`the deposition. During the telephone conference, Patent Owner’s counsel
`further explained that routine discovery is limited in inter partes reviews
`and, here, the deposition is limited to the scope of the witness’s declaration.
`Petitioner’s counsel argued in the April 12, 2017 email that the
`Testimony Guidelines of the Trial Practice Guide prohibit an instruction not
`to answer except in three limited circumstances, none of which apply here.
`Petitioner’s counsel further argued that the other named inventor, who has
`not submitted a declaration in either inter partes review, is a primary author
`of source code on which Patent Owner relies for showing purported
`reduction to practice of the claimed inventions. Petitioner’s counsel also
`
`2
`
`
`
`IPR2016-01198, -01201
`Patent 9,179,005 B2
`Patent 8,542,815 B2
`
`represented that Petitioner has been unable to obtain the contact information
`of the other named inventor, who is an unrepresented third party in Canada.
`Petitioner requests that Patent Owner be ordered to obtain the other named
`inventor’s contact information from the witness and to provide that
`information to Petitioner.
`We agree with Petitioner that Patent Owner’s instruction not to
`answer was improper in the instant proceedings. According to the Trial
`Practice Guide, “[c]ounsel may instruct a witness not to answer only when
`necessary to preserve a privilege, to enforce a limitation ordered by the
`Board, or to present a motion to terminate or limit the testimony.” Office
`Patent Trial Practice Guide, Appendix D: Testimony Guidelines, 77 Fed.
`Reg. 48,756, 48,772 (Aug. 14, 2012). Patent Owner’s reason for the
`instruction not to answer—that the question is outside the scope of the
`deposition—is not one of the reasons set forth in the Trial Practice Guide for
`instructing a witness not to answer. Moreover, Patent Owner fails to provide
`a persuasive reason why, in these particular proceedings, the telephone
`number—which the witness had at hand at the deposition—of a named
`inventor of the challenged patents—who is identified as an author of source
`code on which the Patent Owner relies for showing actual reduction to
`practice (see, e.g., IPR2016-01198, Ex. 2014, 1; Paper 17, 7–41)—should
`not be provided. We do not find it necessary, however, to resume the
`deposition in order for the information to be provided to Petitioner.
`Accordingly, it is:
`ORDERED that Patent Owner shall obtain the telephone number in
`
`question from the witness and provide that information to Petitioner.
`
`
`3
`
`
`
`IPR2016-01198, -01201
`Patent 9,179,005 B2
`Patent 8,542,815 B2
`
`FOR PETITIONER:
`Adam P. Seitz
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`paul.hart@eriseip.com
`
`
`
`FOR PATENT OWNER:
`Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2jmc@knobbe.com
`BoxDigifonica@knobbe.com
`
`4
`
`
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