Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 54
`Date: January 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE, INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 54
`Date: January 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE, INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`On January 18, 2022, we conducted a telephone conference with the
`parties. In that call, Patent Owner asked us for authorization to file an errata
`sheet for the deposition transcript of Dr. Craig Rosenberg, Patent Owner’s
`expert witness, as an exhibit to its Sur-Reply.1 According to Patent Owner,
`the errata sheet would include both typographical and substantive
`corrections.
`The substantive corrections relate to a factual issue. According to
`Patent Owner, after Dr. Rosenberg had reviewed the deposition transcript, he
`determined that part of his testimony was factually incorrect as to whether a
`prior art disclosure constitutes a “tap” on a touch-sensitive display as that
`word appears in the challenged claims. The proposed errata sheet includes
`Dr. Rosenberg’s substantive correction to this testimony as well as other
`minor corrections that Patent Owner indicates are of a typographical nature.
`Patent Owner shared the proposed errata sheet with Petitioner and offered to
`allow one hour of additional deposition time and two pages of additional
`briefing to address the altered testimony. Patent Owner contends that
`allowing the correction would provide an accurate and complete testimonial
`record, and that such corrections are part of the “transcript” contemplated in
`37 C.F.R. § 42.53(f)(7).
`In response, Petitioner argues that the proposed changes to
`Dr. Rosenberg’s deposition transcript are extensive, including striking full
`sentences and adding new testimony. Petitioner contends that Patent Owner
`had the opportunity to ask additional questions on redirect to correct any
`
`
`1 Dr. Rosenberg’s deposition was held on November 17, 2021, and Petitioner
`filed a copy of the transcript with its Reply on December. 15, 2021. See
`Ex. 1052; Paper 49 (Petitioner’s Reply).
`2
`
`
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`perceived error, but did not do so. Petitioner also argues that Patent Owner
`did not propose submitting the proposed errata sheets until nearly two
`months after the deposition on November 17, 2021, and that the time for
`correcting the testimony has passed.
`First, we disagree with Patent Owner that errata sheets are part of the
`“transcript” contemplated in 37 C.F.R. § 42.53(f)(7). The Final Rule Notice
`for this section states, in response to a comment “requesting that proposed
`§ 42.53 provide for the submission of errata sheets and provide guidance on
`what is and is not acceptable in an errata sheet,” that
`[t]he Board’s experience with errata sheets is that parties tend to
`disagree on what is and is not considered an errata sheet. For
`example, there have been instances where a party has attempted
`to change a deponent’s answer from “yes” to “no” over the
`objection of the opponent. Accordingly, the final rules do not
`provide for the submission of errata sheets, however, where a
`party believes that the submission of an errata sheet is necessary
`to the proceeding, the party may arrange for a conference call
`with the Board to discuss the matter.
`Rules of Practice for Trials Before the Patent Trial and Appeal Board,
`77 Fed. Reg. 48612, 48642 (Aug. 14, 2012). Also, prior Board decisions
`have not favored the submission of errata sheets that make substantive
`changes in testimony. See, e.g., Garmin Int’l, Inc. v. Cuozzo Speed Techs
`LLC, IPR2012-00001, Paper 50 at 4 (PTAB July 18, 2013) (“[U]nless
`unopposed by the other party, a request to make a material change to the
`substance of cross examination testimony is unlikely to be successful no
`matter when the request is made.”); CBS Interactive Inc. v. Helferich Patent
`Licensing, LLC, IPR2013-00033, Paper 101 at 2–3 (PTAB Oct. 7, 2013)
`(“The Board may decline to consider a submission of errata sheets
`containing any substantive change.”); Apple Inc. v. Achates Reference
`
`
`
`3
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`Publ’g, Inc., IPR2013-00080, Paper 61 at 5 (PTAB Jan. 21, 2014) (“The
`errata sheets may only correct typographical or minor grammatical errors,
`and may not make any substantive changes to the witnesses’ testimony.”);
`SNF Holding Co. v. BASF Corp., IPR2015-00600, Paper 49 at 20–21 (PTAB
`Aug. 2, 2016) (“[E]rrata sheets that seek to change the substantive testimony
`of a witness are disfavored.”); Deere & Co. v. Gramm, IPR2015-00898,
`Paper 22 at 4–5 (PTAB Jan. 7, 2016) (“[A] deposition transcript errata sheet
`. . . is not an opportunity to make changes to the transcript to include
`testimony that was not, in fact, elicited during the deposition.”); Sony Corp.
`v. Cascades Projection LLC, IPR2015-01846, Paper 24 at 2–3 (PTAB Aug.
`31, 2016) (“In the past, we have refused to authorize the filing of errata that
`include corrections or clarifications beyond transcription errors.”).
`Patent Owner’s request to correct the substance of Dr. Rosenberg’s
`testimony comes too late. Near the close of Dr. Rosenberg’s deposition, the
`parties took a ten-minute recess after the close of cross-examination for
`Patent Owner to consider whether to ask questions on redirect. Ex. 1052,
`125:10–17. But after the break, counsel for Patent Owner stated that “we
`will not be having any questions on redirect so I think this deposition is
`concluded.” Id. at 125:20–21. Thus, Patent Owner has had a fair opportunity
`to elicit testimony correcting any substantive errors it perceived in
`Dr. Rosenberg’s testimony, and did not do so. Petitioner has also relied on
`this testimony in its Reply. See Paper 49, 3, 6, 9, 13.
`Therefore, under the circumstances, Patent Owner has not shown that
`it is necessary for Dr. Rosenberg to provide, at this late stage, what amounts
`to new, substantive testimony in the form of an errata sheet. To the extent,
`however, that Patent Owner wishes to provide an unopposed errata sheet
`
`
`
`4
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`seeking to confirm the transcript to Dr. Rosenberg’s actual testimony elicited
`during the deposition (such as by correcting typographical errors or incorrect
`transcriptions), Patent Owner may do so.
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to submit an errata sheet
`containing corrections to Dr. Rosenberg’s deposition transcript that seek to
`conform the transcript to Dr. Rosenberg’s actual testimony elicited during
`the deposition, so long as it is accompanied by a statement that Petitioner
`does not oppose the submission; and
`FURTHER ORDERED that Patent Owner is not otherwise authorized
`to submit an errata sheet for Dr. Rosenberg’s deposition transcript.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`For PETITIONER:
`Walter Renner
`David Holt
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`
`Tiffany Miller
`James Heintz
`DLA PIPER LLP
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`For PATENT OWNER:
`Robert Asher
`Bruce Sunstein
`Timothy M. Murphy
`SUNSTEIN LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`
`Philip J. Graves
`HAGENS BERMAN SOBOL SHAPIRO LLP
`philipg@hbsslaw.com
`
`
`
`
`6
`
`
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