Deighan, Kyle
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Kyle,
`
`Summers, Teresa <TSummers@wiley.law>
`Thursday, July 8, 2021 1:25 PM
`Deighan, Kyle; Sung, Lawrence; Sylvia, Mary
`Tucker, Todd; Reulbach, John
`RE: IPR Nos. 2020-01573, 2021-00065, 2021-00066, 2020-01711, and 2021-00017
`
`We recall the agreement regarding in-person depositions differently – as limited to reciprocity with respect to the
`parties’ expert witnesses. Indeed, your email to me on April 26th and my email to you on April 29th both expressly
`refer to “appropriate limits on the length of depositions of expert witnesses in these proceedings.” In view of the
`health concerns we have already expressed with respect to Dr. Quintana, he will not be traveling to the United
`States for deposition.
`
`We will circulate a dial-in number shortly for a meet-and-confer on this matter at 1:30 p.m. ET tomorrow. Thank you.
`
`Teresa
`
`From: Deighan, Kyle <KDeighan@Calfee.com>
`Sent: Thursday, July 8, 2021 12:57 PM
`To: Summers, Teresa <TSummers@wiley.law>; Sung, Lawrence <LSung@wiley.law>; Sylvia, Mary <MSylvia@wiley.law>
`Cc: Tucker, Todd <TTucker@Calfee.com>; Reulbach, John <JReulbach@calfee.com>
`Subject: RE: IPR Nos. 2020-01573, 2021-00065, 2021-00066, 2020-01711, and 2021-00017
`
`External Email
`
`Teresa,
`
`We are available August 17-18 for Dr. Condon’s deposition. Please let us know the location the deposition will be held in
`Bradenton, FL.
`
`Regarding Dr. Quintana’s deposition, we understand there are no restrictions to travel from Spain to the United
`States. Thus, per 37 C.F.R. § 42.53(b)(2), Dr. Quintana should be made available for in-person deposition, in the United
`States. See 37 C.F.R. § 42.53(b)(2) (“[D]eposition testimony may be taken at any reasonable time and location within the
`United States before any disinterested official authorized to administer oaths at that location.”); see also PTAB
`Consolidated Trial Practice Guide Nov. 2019 at 33 (“The rules do not provide for a specific location for taking testimony
`other than providing that the testimony may be taken at any reasonable location in the United States.”).
`
`Moreover, based on the parties’ agreements in early May regarding depositions related to uncompelled direct
`testimony across the IPRs, it was our understanding depositions in the IPR proceedings would be held in person in the
`United States. As you may recall, we initially proposed holding Dr. Netland’s deposition remotely, and you specifically
`indicated it was Patent Owner’s preference to hold depositions related to uncompelled direct testimony in person. See
`T. Summers email to K. Deighan dated April 29, 2021. As such, we agreed to make Dr. Netland available for an in-person
`deposition at the end of May. Given that Dr. Quintana signed his declaration on May 17, 2021, Patent Owner should
`have been well aware of the parties’ agreement and the need for Patent Owner to make Dr. Quintana available for an
`in-person deposition in the United States.
`
`1
`
`Petitioner - New World Medical
`Ex. 1028, p. 1 of 3
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`Accordingly, Dr. Quintana should be made available for in-person deposition in the United States. We are willing to
`work with Patent Owner to determine a suitable location in the United States for the deposition. If Patent Owner will
`not make Dr. Quintana available for deposition in the United States, Patent Owner should withdraw Dr. Quintana’s
`testimony from the record in the IPR proceedings. Should a meet and confer remain necessary, we are available Friday
`(7/9) from 1-5pm eastern.
`
`Regards,
`Kyle
`
`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
`kdeighan@calfee.com
`216.622.8551 Phone
`From: Summers, Teresa <TSummers@wiley.law>
`Sent: Wednesday, June 30, 2021 12:30 PM
`To: Deighan, Kyle <KDeighan@Calfee.com>; Sung, Lawrence <LSung@wiley.law>; Sylvia, Mary <MSylvia@wiley.law>
`Cc: Tucker, Todd <TTucker@Calfee.com>; Reulbach, John <JReulbach@calfee.com>
`Subject: RE: IPR Nos. 2020-01573, 2021-00065, 2021-00066, 2020-01711, and 2021-00017
`
`Kyle,
`
`Dr. Condon is available August 16 to 19 in the Bradenton, Florida area. As concerns Dr. Quintana, due to the
`ongoing COVID international travel restrictions and safety concerns and Quintana’s age, he will not be available to
`travel for deposition in the US. Please let us know your availability to meet and confer regarding alternatives to
`deposing Dr. Quintana.
`
`Regards,
`Teresa
`
`From: Deighan, Kyle <KDeighan@Calfee.com>
`Sent: Tuesday, June 29, 2021 3:49 PM
`To: Sung, Lawrence <LSung@wiley.law>; Sylvia, Mary <MSylvia@wiley.law>; Summers, Teresa <TSummers@wiley.law>
`Cc: Tucker, Todd <TTucker@Calfee.com>; Reulbach, John <JReulbach@calfee.com>
`Subject: IPR Nos. 2020-01573, 2021-00065, 2021-00066, 2020-01711, and 2021-00017
`
`External Email
`
`Counsel:
`
`We are in receipt of Patent Owner’s Responses filed in IPR Nos. 2020-01573, 2021-00065, and 2021-00066, including the
`direct testimony of Patent Owner’s witnesses Dr. Quintana and Dr. Condon filed in support. In accordance with the
`parties’ agreement regarding depositions related to uncompelled direct testimony, Petitioner intends to depose Dr.
`Quintana and Dr. Condon across all pending IPR proceedings (under the timing limits agreed upon in our previous
`emails) following the filing of Patent Owner Responses in IPR Nos. 2020-01711 and 2021-00017. Given summer
`schedules and witness locations, we would like to begin scheduling Dr. Quintana’s and Dr. Condon’s depositions now to
`avoid potential conflicts and scheduling issues. Accordingly, please provide the following:
`
` Dr. Quintana’s availability for deposition during the week of July 26-30
` Dr. Condon’s availability for deposition during the week of August 2-6
`2
`
`Petitioner - New World Medical
`Ex. 1028, p. 2 of 3
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`We are willing to work with Patent Owners regarding the location of these depositions but, consistent with the parties’
`agreement and PTAB rules, we expect the depositions to be in person and, particularly as it relates to Dr. Quintana’s
`deposition, in the United States. See 37 C.F.R. § 42.53(b)(2).
`
`Finally, in accordance with 37 C.F.R. § 42.51(b)(1)(iii), please confirm that Patent Owner has served all “relevant
`information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing
`of the documents or things that contains the inconsistency,” including but not limited to testing results or data. As you
`are aware, the requirement under § 42.51(b)(1)(iii) extends to “persons involved in the preparation or filing of the
`documents or things” and therefore includes information known to or in the possession of Patent Owner’s witnesses Dr.
`Quintana and Dr. Condon.
`
`Regards,
`Kyle
`
`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
`kdeighan@calfee.com
`216.622.8551 Office
`216.241.0816 Fax
`
`Calfee, Halter & Griswold LLP
`The Calfee Building
`1405 East Sixth Street
`Cleveland, OH 44114-1607
`
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`3
`
`Petitioner - New World Medical
`Ex. 1028, p. 3 of 3
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`