Trials@uspto.gov
`571.272.7822
`
`
` Paper 49
` Date: November 5, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEW WORLD MEDICAL, INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
` IPR2021-00066, Patent 9,999,544 B21
`____________
`
`Before JAMES A. TARTAL, JAMES A. WORTH,
`ROBERT A. POLLOCK, RYAN H. FLAX, and
`DEVON ZASTROW NEWMAN Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motions to Strike
`37 C.F.R. §§ 42.5(a), 42.12, 42.51(b)(1)(ii)
`
`
`
`
`
`1 Because this Order applies to each of these related inter partes review
`proceedings, we use this caption for efficiency. The parties are not
`authorized to follow this practice, but may request such authorization.
`
`
`571.272.7822
`
`
` Paper 49
` Date: November 5, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEW WORLD MEDICAL, INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
` IPR2021-00066, Patent 9,999,544 B21
`____________
`
`Before JAMES A. TARTAL, JAMES A. WORTH,
`ROBERT A. POLLOCK, RYAN H. FLAX, and
`DEVON ZASTROW NEWMAN Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`ORDER
`Granting Petitioner’s Motions to Strike
`37 C.F.R. §§ 42.5(a), 42.12, 42.51(b)(1)(ii)
`
`
`
`
`
`1 Because this Order applies to each of these related inter partes review
`proceedings, we use this caption for efficiency. The parties are not
`authorized to follow this practice, but may request such authorization.
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`New World Medical, Inc. (“Petitioner”) filed a Petition for an inter
`partes review in: IPR2020-01573 challenging claims of Patent
`9,107,729 B2; IPR2020-01711 challenging claims of Patent 9,358,155 B2;
`IPR2021-00017 challenging claims of Patent 9,820,885 B2; IPR2021-00065
`challenging claims of Patent 10,123,905 B2; and IPR2021-00066
`challenging claims of Patent 9,999,544 B2. See, e.g., Paper 1 of IPR2020-
`01573; see also respective Petitions of other noted proceedings.2
`MicroSurgical Technology, Inc. (“Patent Owner”) is the Patent Owner in
`each of these inter partes review proceedings. Trial has been instituted in
`each proceeding. See, e.g., Paper 22 in IPR2020-01573. Patent Owner filed
`its Response to the Petition (Paper 29), Petitioner filed a Reply to the
`Response (Paper 35), and Patent Owner filed a Sur-Reply to the Reply
`(Paper 44).
`As evidence in support of its Response, Patent Owner submitted
`Exhibit 2020, which is titled “Sworn Affidavit of Manuel Quintana, M.D.”
`Ex. 2002 (“Quintana Affidavit”). “Manuel Quintana” is the named author of
`an article titled “Gonioscopic Trabeculotomy. First Results,” which is
`Petitioner’s Exhibit 1004 and evidence submitted with the Petition.
`Ex. 1004 (the “Quintana Article”). It is Patent Owner’s position that the
`Quintana Affidavit is the sworn testimony of the author of the Quintana
`Article and “clarif[ies] what his article meant to report.” See Ex. 1026, 8:1–
`22.
`
`
`2 For efficiency, we cite to the record from IPR2020-01573; the records in
`the related proceedings are similar.
`
`2
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`Petitioner requests that the Board strike the Quintana Affidavit from
`the record. Paper 34, 1 (“Motion to Strike”). Patent Owner opposes this
`Motion to Strike. Paper 36 (“Opposition”). The Motion to Strike and
`Opposition were authorized. Ex. 1027, 12:14–16:8. Petitioner’s Reply to
`Patent Owner’s Opposition (Paper 45) and Patent Owner’s Sur-Reply to
`Petitioner’s Reply (Paper 46) were also authorized. Paper 43.
`Petitioner sought to cross-examine Dr. Quintana as routine discovery
`pursuant to the Board’s Rule 37 C.F.R. 42.51(b)(1)(ii). Ex. 1028; Ex. 2026.
`According to Patent Owner, Dr. Quintana is an 85-year-old, retired, Spanish
`citizen, residing in Barcelona, Spain. Ex. 1026, 8:1–3. Pursuant to
`37 C.F.R. § 42.53(b)(2), Petitioner requested to depose the witness at a
`location within the United States. Ex. 1028. Patent Owner indicated to
`Petitioner that Dr. Quintana would not travel to the United States from Spain
`because of health concerns and the COVID-19 pandemic. Id.
`When Petitioner’s desire for this deposition failed to come to fruition
`the parties consulted the Board and we instructed the parties to cooperate to
`secure the deposition of Dr. Quintana in Spain in as convenient a manner as
`possible for the witness, which they pursued for several weeks; the parties’
`efforts included emailing and forwarding a letter to Dr. Quintana requesting
`his deposition. Ex. 1026, 17:8–19:7; Ex. 1029; Ex. 1044; Ex. 1045;
`Ex. 2027; Ex. 2028. Again, these efforts failed to procure Dr. Quintana for
`deposition. Ex. 1027.
`Providing some finality to the issue, on August 22, 2021,
`Dr. Quintana emailed Patent Owner’s counsel stating as follows:
`
`3
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`Sorry I did not reply earlier. I have been away on holiday and
`will not return until September. Please understand that I am
`retired and do not wish to be involved in your lawsuit. I agreed
`to explain what my article reported, but I do not wish to answer
`any more questions and ask that you do not contact me about
`this anymore.
`Yours sincerely
`Manuel Quintana, M.D.
`Ex. 1040. Thus, Dr. Quintana unequivocally refuses to submit to cross-
`examination by Petitioner.
`Petitioner argues that “here, Patent Owner is solely responsible for
`Dr. Quintana and [his] Affidavit, and the failure to make Dr. Quintana
`available for deposition calls for the testimony to be struck from the record.”
`Motion to Strike 6. Petitioner argues that the refusal of cross-examination is
`“extremely prejudicial” because the Quintana Affidavit “contradicts and
`attempts to rewrite portions of the [Quintana Article].” Id.; see also
`Ex. 1026, 8:20–22 (Patent Owner agreeing that the Quintana Affidavit seeks
`to clarify what was meant by the text of the Quintana Article). Petitioner
`argues that when submitting the Quintana Affidavit, Patent Owner should
`have understood and planned for compliance with the Board’s rules on
`routine discovery, which make cross-examination of affidavit testimonial
`witnesses obligatory. Motion to Strike 7.
`Patent Owner responds that the Quintana Affidavit is self-
`authenticating; that it is only two pages long, such that making a trip to
`Spain for deposition is not commensurate with its value; and that, rather than
`strike the evidence, the Board should instead accord it the appropriate
`
`4
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`weight. Opposition 1. Patent Owner argues that something less than a live
`deposition would be suitable alternative discovery for Petitioner. Id. Patent
`Owner argues that Dr. Quintana’s testimony “is not dispositive to the issues
`in dispute” in this proceeding and, thus, cross-examination is not needed and
`the Board may simply weigh the evidence in its absence. Id. at 5.
`We are persuaded that the appropriate action here is to grant Patent
`Owner’s Motion to Strike Exhibit 2020 from the record.3 Under authority of
`35 U.S.C. § 316(a)(5), the Director has prescribed regulations “setting forth
`standards and procedures for discovery of relevant evidence including that
`such discovery shall be limited to . . . the deposition of witnesses submitting
`affidavits or declarations.” Routine discovery, as defined by our Rules,
`requires that when a party proffers a witness’s testimony by affidavit, that
`party must make the witness available for cross-examination by the other
`party. See 37 C.F.R. §§ 42.51–42.53. Our Consolidated Trial Practice
`Guide makes clear that “[d]iscovery is a tool to develop a fair record and to
`aid the Board in assessing the credibility of witnesses,” and that “a party
`presenting a witness’s testimony by affidavit should arrange to make the
`witness available for cross-examination. This applies to witnesses employed
`by a party as well as experts and non-party witnesses.” CTPG 22–23.
`We will not consider the affidavit of Dr. Quintana without Patent
`Owner making the witness available for the desired cross-examination by
`
`
`3 Although Petitioner further requests that we expunge Exhibit 2020 (see,
`e.g., Motion to Strike 1, 4), we decline to do so in interest of a complete
`record upon any appeal.
`
`5
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`Petitioner. See, e.g., HTC Corp. v. NFC Tech, LLC, IPR2014-01198, Paper
`42, 3–5 (PTAB Nov. 6, 2015). We agree with Petitioner that under the
`circumstances it would be improper for us to consider the Quintana Affidavit
`without Patent Owner making Dr. Quintana available for the cross-
`examination sought by Petitioner. Dr. Quintana has made clear that he
`refuses to be examined in any manner on this issue in these proceedings.
`Ex. 1040. Allowing the Quintana Affidavit to remain in evidence and to be
`relied upon as support for Patent Owner’s arguments against Petitioner’s
`positions without cross-examination would not provide the fair record
`sought by the rules and would render the Board unable to assess the
`credibility of the witness.
`Patent Owner has not made Dr. Quintana available for cross-
`examination and, as a result, Patent Owner has failed to comply with the
`applicable rule in this proceeding, to Petitioner’s detriment. We, therefore,
`grant Petitioner’s Motion to Strike Exhibit 2020. 37 C.F.R. § 42.12(a) and
`(b). Moreover, to the extent that Patent Owner relies on Exhibit 2020 in its
`briefing, wholly or in-part, as evidence to support its argument, we give no
`weight to that reliance on the evidence.
`
`
`ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Motions to Strike are granted; and
`FURTHER ORDERED that Exhibit 2020 in each of the above-
`captioned proceedings is stricken.
`
`
`6
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`For PETITIONER:
`
`Todd Tucker
`Kyle Deighan
`CALFEE, HALTER & GRISWOLD LLP
`ttucker@calfee.com
`kdeighan@calfee.com
`
`
`For PATENT OWNER:
`
`Lawrence Sung
`Mary Sylvia
`Teresa Summers
`WILEY REIN LLP
`lsung@wileyrein.com
`msylvia@wileyrein.com
`tsummers@wiley.law
`
`
`7
`
`
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