`571-272-7822
`
`
`
`
`
`Paper 17
`Entered: April 18, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
` Case IPR2018-01258 (Patent 8,441,438 B2)1
`____________
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.51(b)
`
`
`
`
`1 The parties are not authorized to use this style of caption.
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`A conference call was conducted with the parties on April 17, 2019, to
`discuss potential cross-examination of Patent Owner’s witness, Gary L.
`Blank, Ph.D. Prior to institution of the trial, Dr. Blank provided testimony
`in support of Patent Owner’s Preliminary Response. Paper 7; Ex. 2001.2
`After institution, Patent Owner filed a Response that does not rely on that
`testimony, but instead relies on testimony by a different witness, Joseph
`LaViola, Ph.D. Paper 14; Ex. 2004. During the call, Patent Owner stated
`that it did not intend to rely on Dr. Blank’s testimony during the trial, and
`that it was prepared to file an express withdrawal of that testimony.
`Regardless of whether Dr. Blank’s testimony is withdrawn, Petitioner
`contends that it is entitled to cross-examine Dr. Blank as routine discovery
`pursuant to 37 C.F.R. § 42.51(b)(1). Petitioner wishes to cross-examine
`Dr. Blank at least in part to explore what it alleges are inconsistencies
`between Dr. Blank’s testimony and Dr. LaViola’s testimony. Patent Owner
`disagrees that cross-examination of Dr. Blank qualifies as routine discovery
`because the regulations governing inter partes reviews distinguish between
`testimony prepared during the preliminary phase before institution and the
`trial phase after institution.
`We agree with Patent Owner. Routine discovery includes “[c]ross
`examination of affidavit testimony prepared for the proceeding.” 37 C.F.R.
`§ 42.51(b)(1). The regulations define “proceeding” as “a trial or preliminary
`proceeding.” 37 C.F.R. § 42.2. In turn, a “[p]reliminary proceeding . . .
`ends with a written decision as to whether a trial will be instituted” and a
`“[t]rial . . . begins with a written decision notifying the petitioner and patent
`
`
`2 Citations are to IPR2018-01257. Similar papers and exhibits have been
`filed in both proceedings.
`
`2
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`owner of the institution of the trial.” Id. When the Office revised the
`regulations governing inter partes reviews to permit patent owners to file
`testimonial evidence in support of a preliminary response, it provided the
`following guidance. The guidance was made in response to a comment from
`the public asking how the scope of discovery post-institution would be
`modified where testimonial evidence was presented pre-institution:
`The Office will resolve these issues on a case-by-case basis. In
`general, a party has the opportunity to cross-examine affidavit
`testimony submitted by another party unless the Board orders
`otherwise. 37 CFR 42.51(b)(1)(ii). If expert testimony presented
`by the patent owner at the preliminary stage is relied on at the
`trial stage, the rule would apply unless the panel decides
`otherwise. For example, if the testimony is withdrawn at the trial
`stage, the Board would have to consider whether cross-
`examination falls within the scope of additional discovery. See
`35 U.S.C. 316(a)(5), 326(a)(5); 37 CFR 42.51(b)(2).
`
`81 Fed. Reg. 18,750, 18,756 (Apr. 1, 2016).
`In light of this guidance, and in light of Patent Owner’s express
`indication that it would file an express withdrawal of Dr. Blank’s testimony,
`we determine that Petitioner is not entitled to cross-examine Dr. Blank as
`routine discovery.3 We make no determination at this time whether cross-
`examination of Dr. Blank may be justified as additional discovery under 37
`C.F.R. § 42.51(b)(2).
`
`
`
`
`
`3 We recognize that a different panel reached a different conclusion under
`similar facts. Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., Case
`IPR2016-01462, slip op. (Paper 30) (PTAB May 31, 2017).
`
`3
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`Accordingly, it is
`ORDERED that Patent Owner shall file, as a paper in both
`proceedings, and by April 24, 2019, an express withdrawal of Dr. Blank’s
`testimony; and
`FURTHER ORDERED that Petitioner is not authorized to cross-
`examine Dr. Blank as routine discovery.
`
`
`
`4
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`PETITIONER:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`PATENT OWNER:
`Jay P. Kesan
`DIMURO GINSBERG PC-DGKEYIP GROUP
`jkesan@dimuro.com
`
`
`
`5
`
`
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