Trials@uspto.gov Paper 29
`571-272-7822
`Entered: October 19, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`____________
`
`Before PHILLIP J. KAUFFMAN and MITCHELL G. WEATHERLY
`Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`571-272-7822
`Entered: October 19, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`____________
`
`Before PHILLIP J. KAUFFMAN and MITCHELL G. WEATHERLY
`Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`
`On October 17, 2017, Judges Kauffman and Weatherly held a call
`with counsel for each party. The parties requested the call to resolve
`differences over cross examination of a witness. Specifically, Petitioner
`seeks to cross examine Mr. Rubinger in person for two hours, while Patent
`Owner contends that cross examination by phone or video for one hour
`would be sufficient. Petitioner expressed a willingness to conduct the cross
`examination either where Patent Owner is located or where the witness is
`located.
`
`Background
`Patent Owner recently filed a Motion to Terminate (Paper 26) in each
`of these proceedings.2 In that Motion, Patent Owner relies on the
`Declaration of Bruce Rubinger (Exhibit 2034) as evidence that typical prior
`art searches would have discovered a prior art reference that was relied on
`for each Petition (Wörn). Paper 26, 5–6.
`The substance of the Declaration is five pages. Ex. 2034. Patent
`Owner compensated Mr. Rubinger for the Declaration. Id. ¶ 5. Patent
`Owner indicates that Mr. Rubinger resides in the United States. Patent
`Owner indicates that Mr. Rubinger is available for telephonic cross
`examination on the afternoon of October 23 or later, and is available for in-
`person cross examination on 26 or 27 October.
`We set the deadline for submission of Petitioner’s Opposition for ten
`business days from the filing of Patent Owner’s Motion. See Paper 24. That
`deadline was set in the context that the Petitions already addressed how and
`
`
`2 Unless otherwise noted, we reference the papers and exhibits of IPR2017-
`00136. IPR2017-00137 contains similar papers.
`
`2
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`why Wörn was discovered, and Patent Owner did not mention that new
`evidence would be submitted. Paper 24, 2. We would have set a different
`schedule had we known new evidence would be submitted.
`
`Analysis
`Patent Owner chose to submit a Declaration from Mr. Rubinger. That
`choice came with certain foreseeable consequences. Specifically, it was
`foreseeable that the witness would be subject to cross examination, and that
`the burden and expense of producing that witness would fall on Patent
`Owner. See 37 C.F.R. § 42.51(b)(1)(ii); Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48,761 (August 14, 2012) (a party presenting a witness,
`including an expert, should normally bear the burden and expense of
`producing that witness and should arrange to make the witness available for
`cross-examination). Further, our rules provide that ordinarily, cross
`examination takes place more than a week prior to the filing date for a paper
`that may rely upon that testimony. 37 C.F.R. § 42.53(d)(2). Thus, Patent
`Owner should have planned to make Mr. Rubinger available promptly for
`his cross examination and recognized that any delay in doing so might
`justify an extension of time for Petitioner’s Opposition to Patent Owner’s
`Motion to Terminate.
`During the call, we explained the impact of Patent Owner’s choice as
`outlined above, and estimated that, given Mr. Rubinger’s availability, in-
`person cross examination would justify extending the due date for the
`Opposition by six business days. Patent Owner’s counsel expressed concern
`that a deposition may delay resolution of the Motion to Terminate. To
`address that concern, we offered Patent Owner the choice of keeping the
`
`3
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`Opposition due as set by Paper 24 in exchange for removing the Rubinger
`Declaration from consideration in this proceeding. Patent Owner elected not
`to pursue that option. Patent Owner’s choice to rely upon Mr. Rubinger’s
`testimony, Petitioner’s proper request to depose him in person, and
`Mr. Rubinger’s immediate unavailability for cross examination, collectively
`warrant an extension of time for Petitioner to file its Opposition. Given that
`choice, it would be duplicitous for Patent Owner to suggest that the delay of
`permitting in-person cross examination is unwarranted.
`Patent Owner cited three inter partes reviews as analogous to the
`situation at hand. We disagree.
`Two of those proceedings are distinguishable because they dealt with
`cross examination of a witness that did not live within the United States.
`Instradent USA, Inc. v. Nobel Biocare Services, AG, Case No. IPR2015-
`01786 (PTAB Aug. 25, 2016) (Paper 61) (witness was an Israeli citizen
`residing in Israel); Activision Blizzard, et al. v. Acceleration Bay, LLC, Case
`No. IPR2015-01951, slip op. at 4–7 (PTAB May 19, 2016) (Paper 17)
`(witnesses resided in Australian).
`The third case, IBM, is distinguishable for at least two reasons. IBM
`Corp. v. Intellectual Ventures I LLC, Case No. IPR2014-01385, slip op. at
`2–3 (PTAB May 4, 2015) (Paper 19). In IBM, the Declaration was obtained
`from a third party witness pursuant to subpoena while Mr. Rubinger is a
`witness within Patent Owner’s control. Id. at 2–3. Further, in IBM, it was
`not shown that the third party witness was compensated by the party offering
`the Declaration, while here, as mentioned above, Mr. Rubinger, was
`compensated by Patent Owner. See Ex. 2034 ¶ 5.
`
`4
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`
`Patent Owner argues that telephonic or video cross examination
`should be sufficient and would reduce time and expense, while Petitioner
`requests in-person cross examination to ensure that its cross examination is
`as effective as possible.3 Mr. Rubinger’s Declaration and his cross
`examination relate to the issue of whether Petitioner reasonably could have
`raised the grounds of unpatentability based in part on Wörn. This issue is at
`the heart of our consideration of Patent Owner’s Motion to Terminate, the
`grant of which would terminate these proceedings. Consequently, we grant
`Petitioner’s request for in-person cross examination. Patent Owner cites no
`persuasive authority to the contrary.
`Petitioner’s request for two hours of cross examination is reasonable.
`
`Conclusion
`Patent Owner’s choice to submit new evidence with its Motion to
`Terminate comes with the foreseeable consequences that Patent Owner must
`make that witness available for cross examination at Patent Owner’s
`expense, and that Petitioner would be permitted sufficient time to prepare an
`Opposition. The slight delay in the deadline for Petitioner’s Opposition,
`which flows directly from Patent Owner’s choice to use Mr. Rubinger’s
`testimony and Mr. Rubinger’s unavailability, will not significantly affect the
`overall schedule of the proceedings. We are not persuaded by Patent
`
`
`3 Patent Owner observed that we are required to interpret Part 42 to secure
`the just, speedy, and inexpensive resolution of these proceedings, and we
`have done so. 37 C.F.R. § 42.1(b). Although a prompt telephonic
`deposition may reduce cost and result in a faster resolution of the Motion to
`Terminate, we must also ensure that the parties have every opportunity to
`present evidence for us to arrive at a just resolution.
`
`5
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`Owner’s arguments for imposing restrictions on the form and schedule for
`Mr. Rubinger’s deposition.
`Accordingly, it is
`ORDERED that Patent Owner must make Mr. Rubinger available for
`cross examination in person, not to exceed two hours, either where Patent
`Owner is located or where the witness is located;
`FURTHER ORDERED that Petitioner shall file its Opposition to
`Patent Owner’s Motion to Terminate no later than six business days after
`Mr. Rubinger’s cross examination; and
`FURTHER ORDERED that Petitioner may file its Opposition with a
`draft version of the transcript of Mr. Rubinger’s deposition so long as the
`final version is seasonably filed once it becomes available.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`PETITIONER:
`
`Joshua C. Harrison
`Reynaldo C. Barceló
`BARCELÓ, HARRISON & WALKER, LLP
`josh@bhiplaw.com
`rey@bhiplaw.com
`
`
`
`PATENT OWNER:
`
`Ehab Samuel
`Danielle Mihalkanin
`MANATT, PHELPS & PHILLIPS, LLP
`esamuel-PTAB@manatt.com
`DMihalkanin@manatt.com
`
`7
`
`
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