Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: July 2, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
`Patent Owner.
`
`IPR2020-00020 (Patent 9,264,483), IPR2020-00080 (Patent 10,264,032),
`IPR2020-00081(Patent 10,270,816), IPR2020-00214 (Patent 9,716,732),
`IPR2020-00298 (Patent 9,456,040), IPR2020-00305 (Patent 9,716,732),
`IPR2020-00306 (Patent 10,193,935), IPR2020-00411 (Patent 9,420,011),
`IPR2020-00412 (Patent 9,456,040), IPR2020-00413 (Patent 10,193,935),
`IPR2020-00414 (Patent 9,705,937), IPR2020-00415 (Patent 9,705,937)1
`
`Before BRIAN J. McNAMARA, MICHELLE N. WORMMEESTER,
`AMBER L. HAGY, and KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case. The parties are
`not authorized to use a caption identifying multiple cases. This is not an expanded panel.
`The panel for IPR2020-00020 and IPR2020-00080 includes Judges McNamara,
`Wormmeester, and Hagy. The panel for the other proceedings includes Judges
`Wormmeester, Hagy, and Sawert.
`
`
`571-272-7822
`
`Paper 15
`Date: July 2, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`HAMMOND DEVELOPMENT INTERNATIONAL, INC.,
`Patent Owner.
`
`IPR2020-00020 (Patent 9,264,483), IPR2020-00080 (Patent 10,264,032),
`IPR2020-00081(Patent 10,270,816), IPR2020-00214 (Patent 9,716,732),
`IPR2020-00298 (Patent 9,456,040), IPR2020-00305 (Patent 9,716,732),
`IPR2020-00306 (Patent 10,193,935), IPR2020-00411 (Patent 9,420,011),
`IPR2020-00412 (Patent 9,456,040), IPR2020-00413 (Patent 10,193,935),
`IPR2020-00414 (Patent 9,705,937), IPR2020-00415 (Patent 9,705,937)1
`
`Before BRIAN J. McNAMARA, MICHELLE N. WORMMEESTER,
`AMBER L. HAGY, and KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case. The parties are
`not authorized to use a caption identifying multiple cases. This is not an expanded panel.
`The panel for IPR2020-00020 and IPR2020-00080 includes Judges McNamara,
`Wormmeester, and Hagy. The panel for the other proceedings includes Judges
`Wormmeester, Hagy, and Sawert.
`
`
`
`
`
`On June 11, 2020, a conference call was conducted among respective
`counsel for the parties, and Judges McNamara, Wormmeester, Hagy, and
`Sawert. A copy of the transcript has been entered into the record.
`See IPR2020-00020, Ex. 1020.2 During the call, the parties discussed the
`request by Petitioner Google LLC (“Petitioner”) to submit, in each of the
`captioned matters, a substitute expert declaration to replace the declaration
`of Petitioner’s expert witness, Dr. Leonard Forys, which request was
`opposed by Patent Owner Hammond Development Int’l (“Patent Owner”).
`Id. Counsel for Petitioner stated that, for reasons unrelated to Dr. Forys’
`work in these matters, Dr. Forys can no longer serve as an expert witness for
`Google. Id. Counsel for Patent Owner stated that Patent Owner opposed
`this request on the basis that Petitioner had not provided sufficient
`explanation as to the reason underlying Petitioner’s determination. Id.
`Subsequent to the call, on June 19, 2020, the Board issued an Order
`stating that Petitioner’s requested relief would be granted, conditioned on
`Petitioner’s counsel filing a certification as outlined in the Order, and subject
`to objections, if any, filed by Patent Owner after receipt of the certification.
`Paper 12, 3 (“June 19th Order”). Petitioner filed the required certification
`on June 23, 2020 (Paper 13), and the deadline for Patent Owner’s objections
`passed without submission.
`On July 1, 2020, after the deadline for Patent Owner’s objections,
`counsel for Petitioner advised the Board in an email that “[t]he parties have
`met and conferred regarding procedures for filing the substitute
`declarations,” and “propose the following procedure”:
`
`
`2 Citations to the record herein are to the record in IPR2020-00020. Similar
`papers have been filed in the other captioned cases.
`3
`
`
`
`
`
`
`Petitioner will file substitute declarations for its
`•
`substitute expert that are identical to its previous expert’s
`declaration (Ex-1003 in each proceeding), with the following
`revisions:
`
`The substitute declarations will delete the
`•
`qualifications section of Petitioner’s previous expert, but
`provide blank paragraph numbering to preserve the
`original paragraph numbering of the substantive portions
`of the declarations;
`•
`A new qualifications section will be added
`at the end of the declarations with additional numbered
`paragraphs to reflect the qualifications of the substitute
`expert; and
`The substitute declarations will be signed by
`•
`Petitioner’s substitute expert.
`•
`The parties ask that the Board consider references
`in the Petitions and other filed documents to the original expert
`declarations (Ex-1003 in each proceeding) to refer to the
`substitute declarations (to be Ex-1021 in each proceeding).
`•
`Petitioner will file the substitute declarations with
`updated Exhibit Lists promptly for all currently-instituted
`proceedings, and shall work diligently to file substitute
`declarations in proceedings in which a decision to institute has
`not yet been made.
`Ex. 3001.
`Counsel for Petitioner also advised that the parties “have further met
`and conferred regarding schedule adjustments and expect to file adjusted
`schedules to accommodate the substitution of experts.” Id.
`In view of the fact that Petitioner has timely filed the certification as
`required in the June 19th Order and Patent Owner has not objected, the
`panels hereby grant Petitioner’s requested relief, according to the terms and
`procedures as set forth above, which Petitioner represents have been agreed
`to by the parties.
`
`4
`
`
`
`
`
`
`Although Petitioner has not stated a date certain by which it will have
`filed all of the substitute declarations, the Board expects that all such
`substitute declarations will be filed no later than July 31, 2020. Petitioner
`should advise the Board promptly if this date is unworkable or otherwise
`contrary to the parties’ agreement. This deadline is not intended to extend
`any earlier deadline that may have been agreed to by the parties.
`ORDER
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s request for authorization to file substitute
`
`expert declarations in each of the captioned cases is granted;
`
`FURTHER ORDERED that Petitioner shall file the substitute expert
`declarations in each of the captioned proceedings no later than July 31,
`2020;
`FURTHER ORDERED that, in filing the substitute expert
`
`declarations, Petitioner shall file substitute declarations for its substitute
`expert that are identical to its previous expert’s declaration (Ex. 1003 in each
`proceeding), with the following revisions: (1) the substitute declarations will
`delete the qualifications section of Petitioner’s previous expert, but provide
`blank paragraph numbering to preserve the original paragraph numbering of
`the substantive portions of the declarations; (2) a new qualifications section
`will be added at the end of the declarations with additional numbered
`paragraphs to reflect the qualifications of the substitute expert; and (3) the
`substitute declarations will be signed by Petitioner’s substitute expert.
`
`FURTHER ORDERED that the Board will consider references in the
`Petitions and other filed documents to the original expert declarations
`(Ex. 1003 in each proceeding) to refer to the substitute declarations (to be
`Ex. 1021 in each proceeding).
`
`5
`
`
`
`
`
`
`FOR PETITIONER:
`
`Erika H. Arner
`Kevin D. Rodkey
`John M. Mulcahy
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT, & DUNNER LLP
`erika.arner@finnegan.com
`kevin.rodkey@finnegan.com
`john.mulcahy@finnegan.com
`
`FOR PATENT OWNER:
`
`Andrew J. Wright
`Joseph P. Oldaker
`Matthew C. Juren
`NELSON BUMGARDNER ALBRITTON P.C.
`andrew@nbafirm.com
`joseph@nbafirm.com
`matthew@nbafirm.com
`DG-Hammond-IPR@nbafirm.com
`
`
`6
`
`
`
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