Trials@uspto.gov
`571-272-7822
`
`Paper 45
`Entered: September 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Cases IPR2016-01268
`Patent 8,365,742 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`Paper 45
`Entered: September 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Cases IPR2016-01268
`Patent 8,365,742 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01268
`Patent 8,365,742 B2
`
`
`At the request of R.J. Reynolds Vapor Company (“Petitioner”), a
`
`telephone conference was held on September 13, 2017, among respective
`
`counsel for Fontem Holdings 1 B.V. (“Patent Owner”) and Petitioner, and
`
`Judges Kokoski, McNamara, and Plenzler. A court reporter was on the line,
`
`and a copy of the transcript will be filed as an exhibit in this proceeding in
`
`due course.1 The purpose of the call was to address Petitioner’s request for
`
`authorization to file a motion to submit supplemental information pursuant
`
`to 37 C.F.R. § 42.123(b), and to file a motion for observations based on the
`
`supplemental information. Section 42.123(b) allows a party to submit
`
`supplemental information more than one month after the institution of trial
`
`where (1) the supplemental information could not reasonably have been
`
`obtained earlier, and (2) consideration of the supplemental information
`
`would be in the interests-of-justice.
`
`Petitioner seeks entry and consideration of the deposition transcript of
`
`Patent Owner’s expert, Mr. Richard Meyst, taken in R.J. Reynolds Vapor
`
`Co. v. Fontem Holding 1 B.V., Case IPR2016-01692 (“the 1692 IPR”).
`
`The 1692 IPR concerns related U.S. Patent No. 9,326,548 B2. Petitioner
`
`represented that Mr. Meyst’s deposition in the 1692 IPR (“the Meyst 1692
`
`Transcript”) was taken two weeks after the July 5, 2017 filing of its Reply,
`
`and therefore was not available when Petitioner filed its last substantive
`
`paper in this proceeding. Petitioner argued that consideration of the Meyst
`
`1692 Transcript is in the interests-of-justice because, in Petitioner’s view,
`
`Mr. Meyst’s testimony in the 1692 IPR is inconsistent with his opinions in
`
`this proceeding.
`
`
`1 This order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
`
`
`
`2
`
`
`
`IPR2016-01268
`Patent 8,365,742 B2
`
`
`Patent Owner submitted similar testimony from the 1692 IPR in this
`
`proceeding, without Board authorization, with observations related to that
`
`testimony, rather than filing the testimony as supplemental information as
`
`Petitioner now requests for the Meyst 1692 Transcript. Specifically, upon
`
`questioning from the Board, Patent Owner confirmed that it filed
`
`observations (“Observations”) in this proceeding on testimony from
`
`Petitioner’s expert, Dr. Robert Sturges, in the 1692 IPR, and submitted the
`
`transcript of Dr. Sturges’ deposition in the 1692 IPR (“the Sturges 1692
`
`Transcript”) as an exhibit in this case. See Paper 38; Ex. 2029. Patent
`
`Owner stated that it included the Sturges 1692 Transcript with the
`
`Observations because, in its view, Dr. Sturges’ testimony in the 1692 IPR is
`
`inconsistent with his opinions in this proceeding.
`
`As an initial matter, we find Patent Owner’s Observations of the
`
`Sturges 1692 Transcript to be improper because the cross-examination did
`
`not occur in connection with this proceeding. The Office Patent Trial
`
`Practice Guide states:
`
`In the event that cross-examination occurs after a party has filed
`its last substantive paper on an issue, such cross-examination
`may result in testimony that should be called to the Board’s
`attention, but the party does not believe a motion to exclude the
`testimony is warranted. The Board may authorize the filing of
`observation to identify such testimony and responses to
`observations, as defined below.
`
`77 Fed. Reg. 48756, 45767–68 (Aug. 14, 2012). The Scheduling Order
`
`authorizes the parties to file observation on cross-examination regarding a
`
`reply witness as set forth in the Office Trial Practice Guide. Paper 11, 6.
`
`The Scheduling Order did not authorize Patent Owner to file Observations as
`
`to cross-examination testimony taken in the context of a different proceeding
`
`
`
`
`3
`
`
`
`IPR2016-01268
`Patent 8,365,742 B2
`
`involving a different patent, and Patent Owner did not seek authorization to
`
`do so.
`
`Consequently, we expunge Patent Owner’s Observations (Paper 38),
`
`as to the Sturges 1692 Transcript, as well as Petitioner’s Responses thereto
`
`(Paper 44). In this proceeding, however, Petitioner filed a declaration from
`
`Dr. Sturges with its Reply, and Patent Owner deposed Dr. Sturges after
`
`Patent Owner submitted its last substantive paper. Patent Owner’s
`
`Observations on that cross-examination testimony are proper. Therefore, we
`
`authorize Patent Owner to re-file its Observations as to Dr. Sturges’ reply
`
`cross-examination, and Petitioner to re-file its Responses thereto, without
`
`reference to the Sturges 1692 Transcript.
`
`We do, however, agree that it is in the interests-of-justice to consider
`
`both the Sturges 1692 Transcript and the Meyst 1692 Transcript in this
`
`proceeding. Petitioner and Patent Owner contend that the expert testimony
`
`in the 1692 IPR is inconsistent with opinions in this proceeding, and we are
`
`persuaded that this testimony is relevant to our analysis of the issues on
`
`which the allegedly inconsistent testimony was given, and to our
`
`determination of each expert’s credibility.
`
`Accordingly, we authorize Petitioner to file the Meyst 1692 Transcript
`
`as an exhibit in this case. We further authorize the parties to file
`
`supplemental briefing, not to exceed five pages, identifying and discussing
`
`the relevant portion(s) of the 1692 IPR transcripts. The parties also are
`
`authorized to file replies to the supplemental briefing, also not to exceed five
`
`pages. We caution the parties that the supplemental briefing should not raise
`
`new issues, re-argue issues, or pursue objections.
`
`
`
`
`4
`
`
`
`IPR2016-01268
`Patent 8,365,742 B2
`
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s Observations on Cross-Examination
`
`of Dr. Robert Sturges (Paper 38), and Petitioner’s Responses to Patent
`
`Owner’s Observations (Paper 44), are expunged;
`
`FURTHER ORDERED that Patent Owner is authorized to re-file its
`
`observations, limited to Dr. Sturges’ cross-examination regarding his reply
`
`declaration (Ex. 2030) and without reference to the Sturges 1692 Transcript
`
`(Ex. 2029), no later than Monday, September 18, 2017;
`
`FURTHER ORDERED that Petitioner is authorized to re-file its
`
`responses to Patent Owner’s observations, without reference to the Sturges
`
`1692 Transcript (Ex. 2029), no later than Monday, September 18, 2017;
`
`FURTHER ORDERED that Petitioner is authorized to file the Meyst
`
`1692 Transcript as an exhibit in this proceeding;
`
`FURTHER ORDERED that Petitioner is authorized to file a
`
`supplemental brief regarding the Meyst 1692 Transcript, and Patent Owner
`
`is authorized to file a supplemental brief regarding the Sturges 1692
`
`Transcript, each limited to five pages, no later than September 20, 2017; and
`
`FURTHER ORDERED that Petitioner and Patent Owner are
`
`authorized to file replies to the supplemental briefing, limited to five pages,
`
`no later than September 27, 2017.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2016-01268
`Patent 8,365,742 B2
`
`PETITIONER:
`
`Ralph J. Gabric
`Robert Mallin
`Yuezhong Feng
`BRINKS GILSON & LIONE
`rgabric@brinksgilson.com
`rmalling@brinksgilson.com
`yfeng@brinksgilson.com
`
`
`PATENT OWNER:
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`
`
`
`
`6
`
`
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