Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Date:August 24, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLIED MATERIALS, INC.,
`Petitioner,
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`
`IPR2021-01339 (Patent 8,676,538 B2)
`IPR2021-01340 (Patent 6,725,402 B1)
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`
`
`Before MIRIAM L. QUINN, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`571-272-7822
`
`Paper 32
`Date:August 24, 2022
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLIED MATERIALS, INC.,
`Petitioner,
`
`v.
`
`OCEAN SEMICONDUCTOR LLC,
`Patent Owner.
`
`
`IPR2021-01339 (Patent 8,676,538 B2)
`IPR2021-01340 (Patent 6,725,402 B1)
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`
`
`Before MIRIAM L. QUINN, JOHN D. HAMANN, and DAVID COTTA,
`Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2021-01339 (Patent 8,676,538 B2)
`IPR2021-01340 (Patent 6,725,402 B1)
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`On August 15, 2022, counsel for Patent Owner contacted the Board to
`request a conference call regarding Petitioner’s refusal to produce two
`experts for deposition. Ex. 3002. 1 Further to this request, a conference call
`was held on Thursday, August 18, 2022, between counsel for Petitioner,
`counsel for Patent Owner, and Administrative Patent Judges Quinn,
`Hamann, and Cotta. At the conclusion of the conference call, we verbally
`authorized Patent Owner to conduct the requested depositions. This Order
`memorializes that decision.
`The facts underlying this dispute between the parties can be
`summarized as follows. Petitioner relied upon the testimony of Dr. Stanley
`Shanfield in the Petitions in IPR2021-01339, IPR2021-01342 and IPR2021-
`01344 and on the testimony of Dr. Miltiadis Hatalis in the Petition in
`IPR2021-01340. Although it was entitled to do so, Patent Owner did not
`depose Dr. Shanfield or Dr. Hatalis before filing its Patent Owner Responses
`in any of these proceedings. In its Reply to Patent Owner’s Response in
`IPR2021-01339, IPR2021-01342, and IPR2021-01344, Petitioner again
`relied upon the testimony of Dr. Shanfield and, in its Reply to Patent
`Owner’s Response in IPR2021-01340, Petitioner again relied upon the
`testimony of Dr. Hatalis. Now, Patent Owner seeks to depose Dr. Shanfield
`and Dr. Hatalis before its Sur-Reply.
`During the teleconference, Petitioner argued that, at this stage in the
`proceedings, our rules limit new evidence to transcripts from cross-
`
`
`1 For expediency, we cite to the exhibit in IPR2021-01339. The same exhibit
`was also filed in IPR2021-01340, IPR2021-01342, and IPR2021-01344.
`
`2
`
`
`
`IPR2021-01339 (Patent 8,676,538 B2)
`IPR2021-01340 (Patent 6,725,402 B1)
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`examination of “reply witnesses.” See, 37 C.F.R. 42.23 (providing that a
`sur-reply, “may not be accompanied by new evidence other than deposition
`transcripts of the cross-examination of any reply witness”). According to
`Petitioner, because the testimony of Drs. Shanfield and Hatalis was first
`presented with its Petitions, Drs. Shanfield and Hatalis are not “reply
`witnesses” as that term is used in our rules. As support for its position,
`Petitioner cited two Board decisions, Lenovo Holding Company, Inc. v.
`Dodots Licensing Solutions LLC, IPR2019-01279, Paper 22 (PTAB, Sept. 1,
`2020) (“Lenovo”) and A.C. Dispensing Equipment Inc. v. Prince Castle LLC,
`IPR2014-00511, Paper 17 (PTAB, Oct. 15, 2014) (“AC Dispensing”). In
`Lenovo, the panel declined to authorize deposition of Petitioner’s technical
`expert following the filing of Petitioner’s Reply, finding “Petitioner’s
`technical expert is not a reply witness.” Lenovo, Paper 22, 4. In A.C.
`Dispensing, the panel declined to authorize deposition of a witness on his
`Petition declaration after the filing of Petitioner’s Reply in part because
`“[p]ostponing cross-examination until the close of evidence does not
`promote efficiency” and “impairs the orderly development of the record.”
`A.C. Dispensing, Paper 17, 3.
`Patent Owner argued that Drs. Shanfield and Hatalis are “reply
`witnesses” because their testimony is cited and relied upon in Petitioner’s
`Reply. In addition, Patent Owner pointed out that Drs. Shanfield and Hatalis
`have not previously been deposed on their cited testimony.
`While we agree with the panel in A.C. Dispensing that “[p]ostponing
`cross-examination until the close of evidence does not promote efficiency”
`(A.C. Dispensing, 3), we were not persuaded by Petitioner’s argument that
`
`3
`
`
`
`IPR2021-01339 (Patent 8,676,538 B2)
`IPR2021-01340 (Patent 6,725,402 B1)
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`because a Sur-reply’s new evidence is limited to cross-examination of “reply
`witnesses,” cross-examination in the instant proceedings could never occur
`after the Reply, when such witnesses have not been previously deposed. We
`recognize that our decision may be at odds with Lenovo and A.C.
`Dispensing, at least insofar as we authorized Patent Owner to cross-examine
`two witnesses that under those cases would have been denied. However, we
`have authority under 37 C.F.R. § 42.5(b) to waive or suspend a requirement,
`and our decision here is limited to the particular circumstances presented in
`the captioned cases. Although we have authorized depositions of Drs.
`Shanfield and Hatalis, we caution Patent Owner that its use of the testimony
`it obtains is limited by 37 C.F.R. 42.23(b), which provides that “[a] sur-reply
`may only respond to arguments raised in the corresponding reply.”
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to take the depositions of
`Drs. Shanfield and Hatalis in the above captioned proceedings.
`
`
`
`
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`
`
`
`
`
`
`
`4
`
`
`
`IPR2021-01339 (Patent 8,676,538 B2)
`IPR2021-01340 (Patent 6,725,402 B1)
`IPR2021-01342 (Patent 6,968,248 B1)
`IPR2021-01344 (Patent 6,907,305 B2)
`
`
`
`
`For Petitioner:
`
`Eric A. Krause
`Pan C. Lee
`AXINN, VELTROP & HARKRIDER LLP
`ekrause@axinn.com
`plee@axinn.com
`
`Timothy Devlin
`Alex Chan
`Joel Glazer
`DEVLIN LAW FIRM LLC
`TD-PTAB@devlinlawfirm.com
`achan@devlinlawfirm.com
`Jglazer@devlinlawfirm.com
`
`5
`
`
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