Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 48
`Entered: November 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)1
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)2,3
`____________
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`ORDER
`Granting In Part Petitioner’s Motion to Compel and Strike
`37 C.F.R. §§ 42.20, 42.22
`
`1 IPR2018-01602 and IPR2018-01603 have been consolidated with
`IPR2018-01601.
`2 IPR2018-01606 and IPR2018-01607 have been consolidated with
`IPR2018-01605.
`3 This Order addresses an issue pertaining to all the above-captioned cases.
`Therefore, we exercise our discretion to issue a single Order to be filed in
`each case. The parties are not authorized to use this style of heading.
`
`
`Tel: 571-272-7822
`
`Paper No. 48
`Entered: November 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)1
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)2,3
`____________
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`ORDER
`Granting In Part Petitioner’s Motion to Compel and Strike
`37 C.F.R. §§ 42.20, 42.22
`
`1 IPR2018-01602 and IPR2018-01603 have been consolidated with
`IPR2018-01601.
`2 IPR2018-01606 and IPR2018-01607 have been consolidated with
`IPR2018-01605.
`3 This Order addresses an issue pertaining to all the above-captioned cases.
`Therefore, we exercise our discretion to issue a single Order to be filed in
`each case. The parties are not authorized to use this style of heading.
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`
`I. INTRODUCTION
`
`On October 8, 2019, during the cross-examination of DirectStream,
`
`LLC’s (“Patent Owner”) declarant, Jon Huppenthal, the parties to this
`
`proceeding emailed the Board seeking guidance regarding the proper scope
`
`of Mr. Huppenthal’s deposition. On October 10, 2019, the parties contacted
`
`the Board again, seeking guidance during the deposition of Steven
`
`Guccione, Ph.D., regarding the proper scope of questioning. The parties and
`
`the Board (Judges Arbes and Zado) held a conference call on October 10,
`
`2019 regarding the proper scope of questioning during a deposition.
`
`Pertinent to the motion before us, Microsoft Corporation (“Petitioner”)
`
`asserted that Patent Owner’s counsel had improperly instructed
`
`Mr. Huppenthal not to answer certain questions, based on (1) objections to
`
`the form and/or the scope of the questions, and (2) objections on the grounds
`
`answering certain questions would require Mr. Huppenthal to reveal
`
`classified information. Patent Owner asserted that the instructions not to
`
`answer were proper. We authorized Petitioner to file a motion specifying
`
`and requesting any relief sought regarding the cross-examination of Mr.
`
`Huppenthal. Ex. 3001.
`
`Pursuant to our authorization, in each of the above-captioned cases,
`
`Petitioner timely filed a Motion to Compel and Strike. IPR2018-01594,
`
`Paper 42 (“Mot.” or “Motion”). Patent Owner timely field an Opposition to
`
`2
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`Petitioner’s Motion to Compel and Strike in each of the above-captioned
`
`cases. IPR2018-01594, Paper 44 (“Opp.” or “Opposition”).4
`
`II. DISCUSSION
`
`Petitioner requests that we (1) compel Mr. Huppenthal to be produced
`
`at the offices of Petitioner’s counsel for continued cross-examination, and
`
`(2) strike portions of Mr. Huppenthal’s declaration (Ex. 2084 ¶¶ 80, 82–86)
`
`for which Petitioner alleges he declined to answer questions based on his
`
`counsel’s instruction not to answer on the grounds the information sought is
`
`classified. Mot. 1–5.
`
`A. Request to Compel Testimony
`
`With regard to Petitioner’s request for continued cross-examination of
`
`Mr. Huppenthal, Petitioner asserts that Mr. Huppenthal was instructed not to
`
`answer several questions about his direct testimony, i.e., his declaration
`
`(Ex. 2084), based on form objections only. Mot. 1. Petitioner identifies
`
`portions of the transcript of Mr. Huppenthal’s deposition for which Mr.
`
`Huppenthal was instructed not to answer, and corresponding portions of his
`
`declaration to which Petitioner asserts the questions were directed. Mot. 1–2
`
`(citing Ex. 1051, 57:21–59:11, 99:8–100:10; Ex. 2084, 18–24, 56).
`
`
`4 The parties filed similar motions and oppositions in all of the
`above-captioned cases, raising similar arguments. Although our citations are
`to the parties’ arguments and evidence in IPR2018-01594, our reasoning and
`our Order applies to all cases, as Mr. Huppenthal’s deposition was entered in
`to all of the proceedings.
`
`3
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`
`Patent Owner responds that the questions for which Mr. Huppenthal
`
`was instructed not to answer were objected to not just as to form but also as
`
`being beyond the scope of Mr. Huppenthal’s declaration. Opp. 1–4. Patent
`
`Owner argues that Petitioner is not entitled to any relief as a result of Mr.
`
`Huppenthal’s refusal to answer the questions objected to as beyond the
`
`scope of Mr. Huppenthal’s declaration. Id. (citing 37 C.F.R.
`
`§ 42.53(d)(5)(D)(ii); Ex. 1051, 12:9–36:7, 51:20–57:7, 57:21–59:11).
`
`“For cross-examination testimony, the scope of the examination is
`
`limited to the scope of the direct testimony.” 37 C.F.R. § 42.53(d)(5)(D)(ii).
`
`However, during cross-examination, “[t]he defending lawyer must not act as
`
`an intermediary, interpreting questions the witness should answer, deciding
`
`which questions the witness should answer, and helping the witness
`
`formulate answers while testifying.” Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) (“Trial Practice Guide”)
`
`(emphasis added). “Consistent with the policy expressed in Rule 1 of the
`
`Federal Rules of Civil Procedure, and corresponding § 42.1(b), unnecessary
`
`objections, ‘speaking’ objections, and coaching the witnesses in proceedings
`
`before the Board are strictly prohibited.” Id. Therefore, “[a]n objection at
`
`the time of the examination—whether to evidence, to a party’s conduct, to
`
`the officer’s qualifications, to the manner of taking the testimony, or any
`
`aspect of the testimony—must be noted on the record, but the examination
`
`still proceeds; testimony is taken subject to any such objection.” Id.
`
`(emphasis added). “Counsel may instruct a witness not to answer only when
`
`4
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`necessary to preserve a privilege, to enforce a limitation ordered by the
`
`Board, or to present a motion to terminate or limit the testimony.” Id.
`
`(emphasis added). A party may initiate a conference call with the Board to
`
`seek authorization to move to terminate or limit the testimony “on the
`
`ground that it is being conducted in bad faith or in a manner that
`
`unreasonably annoys, embarrasses, or oppresses the witness or party.” Id. at
`
`48,772–73.
`
`We do not address the merits of all of Patent Owner’s objections on
`
`the basis of scope, because that issue is not before us. The issue before us is
`
`whether certain instructions not to answer were proper, and whether Patent
`
`Owner’s instructions impeded, delayed, or frustrated the fair
`
`cross-examination of Mr. Huppenthal. Id. at 48,772. Per the Trial Practice
`
`Guide, Patent Owner’s counsel is permitted to concisely state his objection,
`
`in a non-argumentative and non-suggestive manner, e.g., “objection, scope,”
`
`but the examination thereafter is required to still proceed, the testimony
`
`subject to the objection. Id. Here, certain instructions not to answer were
`
`improper because Patent Owner did not make the objection to preserve a
`
`privilege, enforce a limitation ordered by the Board, or to present a motion
`
`to terminate or limit the testimony. Id.; see, e.g., Ex. 1051, 57:21–60:19,
`
`99:8–100:9. By instructing Mr. Huppenthal not to answer, Patent Owner’s
`
`counsel impeded and frustrated the fair cross-examination of
`
`Mr. Huppenthal.
`
`5
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`
`Although we do not determine, at this stage, the merits of Patent
`
`Owner’s objections based on scope, we point out that in at least one
`
`instance, Patent Owner’s objection appears to be meritless. In his
`
`declaration, Mr. Huppenthal states, “By 2007 all of the inventions I have
`
`discussed so far were incorporated into SRC-6 products and the SRC-7 was
`
`under development. With the exception of some of the technology described
`
`in the 6,076,152, none of this new technology existed in the prototype
`
`system delivered to ORNL.” Ex. 2084 ¶ 80. Petitioner’s counsel asked
`
`Mr. Huppenthal about this testimony, to which Mr. Huppenthal was
`
`instructed not to answer (Ex. 1051, 99:8–100:9):
`
`Q Can you identify for me in the ’152 patent what
`you’re referring to there [Ex. 2084 ¶ 80] as some of the
`technology described in the patent?
`
`[PATENT OWNER’S COUNSEL]: Objection to
`form, outside the scope, instruct witness not to answer.
`
`[PETITIONER’S COUNSEL]: He identifies it in
`this sentence.
`
`[PATENT OWNER’S COUNSEL]: Take it up with
`the board.
`
`Mr. Huppenthal in his declaration refers to “some of the technology
`
`described in” U.S. Patent No. 6,076,152 (the patent challenged in
`
`IPR2018-01594), but does not further identify that “technology.” Ex. 2084
`
`¶ 80. Petitioner’s question plainly was within the scope of Mr. Huppenthal’s
`
`direct testimony.
`
`6
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`
`For the foregoing reasons, having reviewed the Motion and
`
`Opposition, and the evidence in the record, we find that Mr. Huppenthal
`
`improperly was instructed not to answer questions during his original
`
`deposition and grant Petitioner’s request for additional cross-examination of
`
`Mr. Huppenthal.
`
`B. Request to Strike
`
`Regarding Petitioner’s request to strike paragraphs 80 and 82–86 of
`
`Mr. Huppenthal’s declaration, we determine the Motion is premature in light
`
`of our Order compelling Patent Owner to produce Mr. Huppenthal for
`
`additional cross-examination. We note Patent Owner has stated in its
`
`Opposition that it alternatively “seeks a protective order from the Board” to
`
`preclude discovery of information it asserts is classified, the disclosure of
`
`which allegedly raises national security concerns. Opp. 5. However, Patent
`
`Owner has not sought authorization from the Board to file a motion for a
`
`protective order. 37 C.F.R. §§ 42.20, 42.22, 42.54. Patent Owner’s failure
`
`to do so is not merely a procedural flaw. In filing a motion, Patent Owner
`
`must demonstrate it is entitled to the relief requested. Id. In the Opposition,
`
`Patent Owner provides only a bare assertion that certain information is
`
`classified. Opp. 5. Further, no protective order governing the treatment of
`
`confidential information has been entered in these proceedings, and neither
`
`party has provided a proposed protective order. See 37 C.F.R. § 42.54.
`
`At this stage, we cannot determine the merits of Patent Owner’s request,
`
`which has not been presented in a motion. Although we do not enter a
`
`7
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`protective order or otherwise preclude discovery of information asserted by
`
`Patent Owner to be classified, we do not at this time compel Mr. Huppenthal
`
`to disclose such information either. However, if Mr. Huppenthal cannot be
`
`meaningfully cross-examined regarding topics addressed in his declaration
`
`due to allegedly classified information, Petitioner may seek to exclude those
`
`portions of his declaration by filing a motion to exclude at the appropriate
`
`time. See 37 C.F.R. § 42.64(c).
`
`III. CONCLUSION
`
`For the foregoing reasons, we order Patent Owner to produce
`
`Mr. Huppenthal for additional cross-examination. Petitioner does not
`
`specify in the Motion how much deposition time is requested. However, in
`
`view of Petitioner’s identification in the Motion of instances of instructions
`
`not to answer, we determine one hour of deposition time is sufficient.
`
`Petitioner has requested the cross-examination take place at Petitioner’s
`
`counsel’s office. Mot. 3. Patent Owner’s Opposition is silent as to location
`
`in the event we grant Petitioner’s Motion. See generally Opp. At this stage,
`
`we leave to the parties the determination of where the deposition should take
`
`place. Given that Mr. Huppenthal has already appeared once, however, the
`
`parties should take the convenience of the witness into account in scheduling
`
`and determining the method and location of the deposition. We authorize
`
`the deposition to be conducted electronically using video-conferencing or
`
`teleconferencing technology if either is more convenient for the witness or
`
`parties.
`
`8
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`
`The parties are reminded of the guidance in Title 37 of the Code of
`
`Federal Regulations and the Testimony Guidelines (Appendix D) set forth in
`
`the Trial Practice Guide as to the taking of depositions.
`
`IV. ORDER
`
`Accordingly, it is hereby
`
`ORDERED that Petitioner’s Motion to compel Patent Owner to
`
`produce Jon Huppenthal for additional cross-examination is granted,
`
`wherein the deposition may not exceed one (1) hour and shall take place at a
`
`time and location to be agreed upon by the parties or by video-conferencing
`
`or teleconferencing as agreed upon by the parties; and
`
`FURTHER ORDERED that Petitioner’s Motion to strike portions of
`
`Mr. Huppenthal’s declaration (Ex. 2084 ¶¶ 80, 82–86) is denied.
`
`
`
`
`
`9
`
`
`
`Case IPR2018-01594 (Patent 6,434,687 B2)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601 (Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605 (Patent 7,620,800 B2)
`
`
`PETITIONER:
`
`Joseph Micallef
`jmicallef@sidley.com
`
`Jason Greenhut
`jgreenhut@sidley.com
`
`PATENT OWNER:
`
`Alfonso Chan
`achan@shorechan.com
`
`Joseph DePumpo
`jdepumpo@shorechan.com
`
`
`10
`
`
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