UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent No. 8,382,186
`____________
`
`NOTICE OF JOINT STIPULATION
`REGARDING CROSS-EXAMINATION
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent No. 8,382,186
`____________
`
`NOTICE OF JOINT STIPULATION
`REGARDING CROSS-EXAMINATION
`
`
`
`Petitioner Yita LLC and Patent Owner MacNeil IP LLC (collectively, “the
`
`parties”) jointly stipulate as follows.
`
`I. CROSS-EXAMINATION OF WITNESSES NOT LOCATED IN THE U.S.
`
`As authorized by the Board during the parties’ June 30, 2021 telephone
`
`conference with the Board and in the Board’s June 30, 2021 Order (Paper 43), and
`
`pursuant to 37 C.F.R. § 42.53, the cross-examination of Patent Owner’s declarants
`
`in IPR2020-01139 and IPR2020-01142 who are located outside the United States
`
`will occur utilizing the following procedure due to restrictions imposed by the
`
`COVID-19 pandemic. With respect to any witness whose preferred language is not
`
`English, the parties agree to use the procedure set forth below in place of the
`
`procedure for foreign language depositions set forth in Ariosa Diagnostics v. Isis
`
`Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013).
`
`A. Procedures for English-Speaking Declarants
`If the witness prefers to be interviewed in English, then the following
`
`procedures shall apply.
`
`1.
`
`Counsel will interview the witness remotely by video (e.g., using a
`
`platform such as Zoom or Live Litigation) at a time agreed upon by the parties in
`
`lieu of a deposition.
`
`2.
`
`The witness will not be administered an oath in advance of the
`
`interview and the interview will not be captioned as a deposition.
`
`2
`
`
`
`3.
`
`A stenographer will transcribe the questions and answers. The
`
`interview will be recorded, and the recording may be used by the stenographer to
`
`complete the transcript following the interview. The parties agree to request an
`
`expedited transcript of the interview to be completed no later than one day from the
`
`date of the interview, the additional cost for expediting to be paid for by Patent
`
`Owner. The recording will be used for the aforementioned purposes by the
`
`stenographer only and will not be submitted to the Board.
`
`4.
`
`Immediately following the conclusion of each interview, and prior to
`
`disconnecting the videoconference line, the witness will be asked to sign a
`
`supplemental declaration with the following statements:
`
`5.
`
`On _______ [date(s)] I was interviewed by counsel for the parties to
`
`U.S. P.T.A.B. Proceedings IPR2020-01139 and IPR2020-01142. I hereby declare
`
`that all statements I made during the interview of my own knowledge are true and
`
`that all statements I made during the interview on information and belief are believed
`
`to be true, and further that these statements were made with the knowledge that
`
`willful false statements and the like so made are punishable by fine or imprisonment,
`
`or both, under Section 1001 of Title 18 of the United States Code.
`
`6.
`
`Counsel for Patent Owner will provide counsel for Petitioner with a
`
`copy of the signed supplemental declaration promptly upon execution.
`
`3
`
`
`
`7.
`
`The completed transcript of the interview shall be provided to the
`
`witness within one business day of receipt of the final transcript. The witness shall
`
`have one week after receipt of the completed transcript to review the transcript for
`
`errors. If the witness has any changes to the transcript, an errata sheet must be
`
`provided by the witness. The errata sheet shall be in a format analogous to an errata
`
`sheet that would be provided for a deposition, where the witness indicates any
`
`changes in the testimony and the reason for the change.
`
`8.
`
`The completed transcript, supplemental declaration, and errata sheet, if
`
`any, shall be combined into a single document (the “witness statement”). Counsel
`
`for Patent Owner will provide counsel for Petitioner with a copy of the witness
`
`statement promptly after receiving any errata sheet. The witness statement will serve
`
`as the official record of the witness’s testimony. Patent Owner agrees not to object
`
`to the admissibility of the witness statement based solely on the fact that the
`
`testimony is in the form of a witness statement in lieu of a deposition. All other
`
`potential objections are hereby preserved.
`
`B. Procedures for Foreign-Language Witnesses
`If the witness prefers to be interviewed in a language other than English, then
`
`the following procedures shall apply.
`
`9.
`
`Counsel will interview the witness remotely by video (e.g., using a
`
`platform such as Zoom or Live Litigation) at a time agreed upon by the parties in
`
`4
`
`
`
`lieu of a deposition.
`
`10. Counsel for Patent Owner will provide an interpreter for the interview.
`
`11. The witness and the interpreter will not be administered an oath in
`
`advance of the interview and the interview will not be captioned as a deposition.
`
`12. The interpreter will translate counsel’s questions from English to the
`
`language of the witness and the witness’s answers to English.
`
`13. A stenographer will transcribe the English questions and answers
`
`(“English transcript”). The interview will be recorded, and the recording may be
`
`used by the stenographer to complete the transcript following the interview. The
`
`parties agree to request an expedited transcript of the interview to be completed no
`
`later than one day from the date of the interview, the additional cost for expediting
`
`to be paid for by Patent Owner. The recording will be used for the aforementioned
`
`purposes by the stenographer only and will not be submitted to the Board.
`
`14.
`
`Immediately following the conclusion of each interview, and prior to
`
`disconnecting the videoconference line, the witness will be asked to sign a
`
`supplemental declaration with the following statements:
`
`15. On _______ [date(s)] I was interviewed by counsel for the parties to
`
`U.S. P.T.A.B. Proceedings IPR2020-01139 and IPR2020-01142. I hereby declare
`
`that all statements I made during the interview of my own knowledge are true and
`
`5
`
`
`
`that all statements I made during the interview on information and belief are believed
`
`to be true, and further that these statements were made with the knowledge that
`
`willful false statements and the like so made are punishable by fine or imprisonment,
`
`or both, under Section 1001 of Title 18 of the United States Code.
`
`16.
`
`Immediately following the conclusion of each interview, and prior to
`
`disconnecting the videoconference line, the interpreter will be asked to sign a
`
`supplemental declaration with the following statements:
`
`17. On _______ [date(s)] I served as the interpreter for the interview of
`
`_________________[witness] on behalf of counsel for the parties to U.S. P.T.A.B.
`
`Proceedings IPR2020-01139 and IPR2020-01142. I hereby declare that I rendered
`
`all linguistic interpretations during the interview as accurately and faithfully as
`
`possible, all statements I made during the interview of my own knowledge are true,
`
`and that all statements I made during the interview on information and belief are
`
`believed to be true, and further that these statements were made with the knowledge
`
`that willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
`
`18. Counsel for Patent Owner will provide counsel for Petitioner with a
`
`copy of the signed supplemental declarations of the witness and the interpreter
`
`promptly upon execution.
`
`6
`
`
`
`19. A translator may use the English transcript to transcribe a foreign-
`
`language transcript of the interview in the witness’s preferred language to
`
`accompany the English transcript. The English transcript will be the official
`
`transcript.
`
`20. The witness shall have ten days after receipt of the completed English
`
`transcript to review the transcript for errors. If the witness has any changes to the
`
`transcript, an errata sheet must be provided by the witness. The errata sheet shall be
`
`in a format analogous to an errata sheet that would be provided for a deposition,
`
`where the witness indicates any changes in the testimony and the reason for the
`
`change. Any errata sheet provided by the witness shall be translated into English by
`
`a translator.
`
`21. The English transcript, supplemental declarations of the witness and
`
`interpreter, and the English errata sheet, if any, shall be combined into a single
`
`document (the “witness statement”). Counsel for Patent Owner will provide counsel
`
`for Petitioner with a copy of the witness statement promptly after receiving any
`
`errata sheet. The witness statement will serve as the official record of the witness’s
`
`testimony. Patent Owner agrees not to object to the admissibility of the witness
`
`statement based solely on the fact that the testimony is in the form of a witness
`
`statement in lieu of a deposition. All other potential objections are hereby preserved.
`
`7
`
`
`
`C. Rules for an Interview
`Except as specified herein, the Patent Trial and Appeal Board’s deposition-
`
`related rules, e.g., as specified in the Trial Practice Guide and 37 C.F.R. § 42.53, will
`
`apply to an interview, including but not limited to:
`
` a.
`
`The scope of cross examination will be limited to the scope of
`
`the direct testimony.
`
`b.
`
`Once the cross-examination of a witness has commenced, and
`
`until cross-examination of the witness has concluded, counsel offering the
`
`witness on direct examination shall not: (a) consult or confer with the witness
`
`regarding the substance of the witness’ testimony already given, or anticipated
`
`to be given, except for the purpose of conferring on whether to assert a
`
`privilege against testifying or on how to comply with a Board order; or (b)
`
`suggest to the witness the manner in which any questions should be answered.
`
`c.
`
`Counsel may instruct a witness not to answer only when
`
`necessary to preserve a privilege, enforce a limitation ordered by the Board,
`
`or to present a motion to terminate or limit the testimony.
`
`d.
`
`The scope of redirect examination will be limited to the scope of
`
`the questions asked on cross examination.
`
`e.
`
`In the event there is a dispute during the interview, the parties
`
`8
`
`
`
`agree to suspend the interview while relief is sought from the Board.
`
`f.
`
`The Board may impose an appropriate sanction -- including the
`
`reasonable expenses and attorneys’ fees incurred by any party -- on a person
`
`who impedes, delays, or frustrates the fair examination of the witness.
`
`Dated July 1, 2021
`
`Respectfully submitted,
`
`2001 Ross Ave., Suite 900
`Dallas, TX 75201
`(214) 953-6500
`
`
`BAKER BOTTS L.L.P.
`
`/David G. Wille/
`David G. Wille (Reg. No. 38,363)
`Lead Counsel for Patent Owner MacNeil IP
`LLC
`
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`
`/R. Wilson Powers III/
`R. Wilson Powers III (Reg. No. 63,504)
`Attorney for Petitioner Yita LLC
`
`Dated July 1, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
`
`1st day of July, 2021, a complete and entire copy of this NOTICE OF JOINT
`
`STIPULATION REGARDING CROSS-EXAMINATION was served on
`
`Petitioner via electronic mail at the following addresses:
`
`Mark P. Walters (Reg. No. 46,050)
`walters@LoweGrahamJones.com
`
`Ralph W. Powers III, Reg. No. 63,504
`tpowers-PTAB@sternekessler.com
`
`Jason A. Fitzsimmons, Reg. No. 65,367
`jfitzsimmons-PTAB@sternekessler.com
`
`Stephen A. Merrill, Reg. No. 72,955
`smerrill-PTAB@sternekessler.com
`
`John J. Bamert, Reg. No. 74,859
`bamert@LoweGrahamJones.com
`
`PTAB@sternekessler.com
`
`July 1, 2021
`Date
`
`/David G. Wille/
`David G. Wille (Reg. No. 38,363)
`BAKER BOTTS L.L.P.
`(214) 953-6595
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`
`Attorneys for Patent Owner, MacNeil IP
`LLC
`
`10
`
`
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