`Tel: 571-272-7822
`
`Paper 21
`Entered: April 5, 2019
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SONOS, INC.,
`Petitioner,
`
`v.
`
`IMPLICIT, LLC,
`Patent Owner.
`
`
` IPR2018-00766 (Patent 7,391,791 B2)1
` IPR2017-00767 (Patent 8,942,252 B2)
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This Order addresses issues that are identical in each of these cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers without prior authorization.
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2017-00767 (Patent 8,942,252 B2)
`
`
`BACKGROUND
`On April 2, 2019, the Board received an email from Patent Owner
`requesting authorization to permit the videotaping of Petitioner’s declarant
`Dr. Roman Chertov in a deposition scheduled for April 9, 2019. Petitioner
`opposes the request. The Board conducted a conference call with the parties
`on April 4, 2019. A reporter was on the call, and Patent Owner agreed to
`enter a transcript of the call into the record.
`Patent Owner asserts that authorization for videotaping should be
`permitted because videotaping will allow evidence to be preserved should
`credibility issues arise. Patent Owner alleges that the testimony in the
`deposition is expected to be related to disputed issues on source code
`interpretation where witness demeanor could be relevant. Patent Owner
`indicates that, as of this time, it is not seeking to have the videotape
`submitted in these proceedings. Patent Owner further stated that it would
`cover the cost of recording the deposition in the requested manner, and to
`provide a copy to Petitioner.
`Petitioner opposes Patent Owner’s request for videotaping because it
`is argued that Patent Owner has not established that there is any evidence to
`suggest that Dr. Chertov’s credibility is at issue, and the witness is offering
`expert opinions and is not a fact witness. Petitioner asserts that Patent
`Owner has represented that Patent Owner intends to use the videotaped
`deposition in a co-pending litigation, and not in these proceedings.
`Petitioner contends that videotaping would subject the witness to
`unnecessary stress. Petitioner also argues that, absent agreement of the
`parties to videotaping, authorizing Patent Owner’s request amounts to a
`broad grant of any one-sided request under 37 C.F.R. § 42.53(a).
`
`2
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2017-00767 (Patent 8,942,252 B2)
`
`
`After hearing the respective positions of the parties, we authorize
`videotaping the testimony of Dr. Roman Chertov, provided that Patent
`Owner pays costs associated with videotaping the deposition, including costs
`of providing a copy of the videotape to Petitioner. The purpose of this
`authorization is to preserve an opportunity for the panel to observe the
`recorded deposition testimony, should the need or desire arise. The
`authorization to conduct a videotaped deposition does not render the
`recording admissible in this, or another, proceeding. The recording may not
`be submitted in this proceeding without additional authorization under 37
`C.F.R. § 42.53(a).
`
`ORDER
`
`It is, therefore,
`ORDERED that Patent Owner is authorized to videotape the deposition
`
`testimony of witness, Dr. Roman Cherov;
`
`FURTHER ORDERED that Patent Owner shall bear the cost of the
`videotaped deposition; and
`
`FURTHER ORDERED that authorization granted by this Order does
`not extend to the submission of the videotaped deposition as evidence in this
`proceeding.
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2017-00767 (Patent 8,942,252 B2)
`
`PETITIONER:
`
`Rory P. Shea
`Cole B. Richter
`George I. Lee
`Michael P. Boyea
`LEE SULLIVAN SHEA & SMITH LLP
`224 N Desplaines St, Suite 250
`Chicago, Illinois 60661
`shea@ls3ip.com
`richter@ls3ip.com
`lee@ls3ip.com
`boyea@ls3ip.com
`
`
`PATENT OWNER:
`
`Christian Hurt
`THE DAVIS FIRM, PC
`213 N. Fredonia Street, Suite 230
`Longview, Texas 75601
`churt@bdavisfirm.com
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
