From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Trials
`Glucoft, Josh; Trials
`#Meta-Thales-IPR; Thales Meta IPRs; Gentex-IPR; Meredith Addy; robert@addyhart.com; Greg Gulliver; Brandon
`Helms; dkrinsky@wc.com; Ghosh, Shayon; Argall, Arthur; Harber, Adam; Collins, Melissa
`RE: IPR Nos.: 2022-01294; 2022-01298; 2022-01301; 2022-01302; 2022-01303; 2022-01304; 2022-01305; and
`2022-01308
`Wednesday, May 31, 2023 7:57:40 AM
`
`Dear counsel, The parties to these proceedings are Petitioner and Patent Owner. See 37 C. F. R. §§ 42. 2, 42. 10(a). Accordingly, only counsel for
`which Patent Owner has filed a power of attorney (and subsequent mandatory notices) may ask questions
`
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`Dear counsel,
`
`The parties to these proceedings are Petitioner and Patent Owner. See 37 C.F.R. §§ 42.2,
`42.10(a). Accordingly, only counsel for which Patent Owner has filed a power of attorney (and
`subsequent mandatory notices) may ask questions of Petitioner’s expert in a deposition. See
`37 C.F.R. § 42.10(b). The panels are not aware of any Rule or other authority that permits a
`real party in interest to conduct a deposition of an opposing party’s expert. To the extent that
`Patent Owner desires another attorney not currently of record on behalf of Patent Owner to
`ask questions during a deposition, Patent Owner must file an updated power of attorney
`identifying that person and subsequent mandatory notices indicating whether that individual
`is lead or back-up counsel. To the extent Patent Owner does not seek to file a new power of
`attorney, counsel for Gentex Corporation may still attend the deposition and may provide
`questions that counsel for Patent Owner asks of Petitioner’s expert. But, only counsel for
`Patent Owner may question Petitioner’s expert.
`
`To the extent the parties have any additional questions, they should contact the Board.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Glucoft, Josh <josh.glucoft@kirkland.com>
`Sent: Friday, May 26, 2023 5:35 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: #Meta-Thales-IPR <Meta-Thales-IPR@kirkland.com>; Thales Meta IPRs <thales-
`
` 1
`
`META 1039
`IPR2022-01304
`META V. THALES
`
`

`

`meta-iprs@addyhart.com>; Gentex-IPR <Gentex-IPR@wc.com>; Meredith Addy
`<meredith@addyhart.com>; robert@addyhart.com; Greg Gulliver
`<gbgulliver@addyhart.com>; Brandon Helms <bhelms@addyhart.com>;
`dkrinsky@wc.com; Ghosh, Shayon <sghosh@wc.com>; Argall, Arthur
`<aargall@wc.com>; Harber, Adam <AHarber@wc.com>; Collins, Melissa
`<MCollins@wc.com>
`Subject: IPR Nos.: 2022-01294; 2022-01298; 2022-01301; 2022-01302; 2022-01303; 2022-
`01304; 2022-01305; and 2022-01308
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`The parties request a conference call to discuss Petitioner’s requested relief as described
`below. Counsel for Patent Owner (Thales), Petitioner (Meta), and Gentex are available for a
`conference call after 11 am Eastern on Tuesday, May 30. The parties would like to resolve
`this issue promptly because Petitioner’s expert is scheduled to be deposed in Los Angeles on
`Thursday, June 1.
`
`Petitioner’s Background Statement to Provide Context and Requested Relief:
`Counsel for Gentex, which is not the owner of any of the patents at issue in the above-
`referenced IPRs but rather is only a licensee without all substantial rights, recently posed
`cross-examination questions to Petitioner’s expert during his first deposition, despite
`Petitioner’s objections that questioning by counsel for a licensee is not permitted and despite
`the presence at that deposition of counsel for Patent Owner (Thales). Counsel for Gentex has
`also indicated that it intends to try to cross-examine Petitioner’s expert in two upcoming
`depositions, again despite Petitioner’s objections to such involvement by counsel for a
`licensee and again despite the presence of counsel for Patent Owner. Petitioner seeks
`authorization to move to preclude (i) the submission into the record of the portions of the prior
`deposition transcript containing cross-examination conducted by counsel for Gentex, and (ii)
`cross-examination questioning by counsel for Gentex in the two upcoming depositions of
`Petitioner’s expert.
`
`Petitioner’s requested relief is based in part on 35 U.S.C. § 313, because “[a]ccording to 35
`U.S.C. § 313, it is the patent owner, not a licensee, who has the right to participate in inter
`partes review proceedings….” EMC Corp. v. Actividentity, Inc., IPR2017-00338, Paper No. 9
`at 2 (P.T.A.B. July 3, 2017). Petitioner’s requested relief is further based in part on 37 C.F.R.
`§ 42.9, which requires action to be taken by a patent’s owner, not a licensee. Petitioner’s
`requested relief is further based in part on 37 C.F.R. § 42.53, which does not provide authority
`for any entity other than a “party” to take cross-examination testimony, where § 42.2 defines
`“party” as “mean[ing] at least the petitioner and the patent owner and, in a derivation
`proceeding, any applicant or assignee of the involved application”—i.e., not a licensee without
`all substantial rights, such as Gentex. See Abbott Labs v. Cardinal Health 529, LLC,
`IPR2019-00098, Paper No. 10 at 2 (P.T.A.B. Feb. 14, 2019) (“An entity’s status as a real party
`in interest, however, does not necessarily qualify that entity as a ‘party’ to the proceeding.”).
`
` 2
`
`META 1039
`IPR2022-01304
`META V. THALES
`
`

`

`Relatedly, Patent Owner (Thales) filed notices of deposition in the IPR proceedings falsely
`indicating that “[c]ounsel for the parties have conferred and agreed that Patent Owner and
`Real Party-in-Interest, Thales Visionix, Inc. and Gentex Corp. [respectively], will conduct
`cross-examination by deposition of Petitioner’s witness….” This is false: Petitioner never
`agreed that Gentex or its counsel could conduct cross-examination. Petitioner seeks
`authorization to move to expunge these inaccurate notices of deposition. Petitioner’s
`requested relief is based at least in part on 37 C.F.R. § 42.53(d)(6). Petitioner’s challenge to
`the false statements contained in these notices is timely and not waived because: (i) two of the
`three scheduled depositions to which these notices apply have not yet occurred; and (ii) the
`notice for the third and only deposition that has taken place so far was untimely filed fewer
`than ten business days before that deposition, contrary to 37 C.F.R. § 42.53(d)(4), and
`Petitioner also objected on the record during that deposition to attempts by Gentex’s counsel
`to conduct cross-examination.
`
`Thales and Gentex’s Position
`Counsel for Patent Owner (Thales) and for Gentex oppose Petitioner’s requested relief. As
`Patent Owner explained in its Preliminary Response, Gentex has an exclusive field-of-use
`license to each of the patents at issue in these IPRs and is properly a real party in interest.
`Petitioner has not disputed Gentex’s status in these proceedings; nor has Petitioner ever
`asserted in the related district court proceedings that Gentex lacks standing to sue for patent
`infringement.
`
`As a real party in interest in these IPR proceedings, Gentex is entitled to participate in
`depositions, and its counsel may cross-examine witnesses. The Rules and decisions that
`Petitioner cites say only that the patent owner must participate in certain aspects of an IPR
`proceeding. There is no dispute that Patent Owner has done so here. None of the authority
`that Petitioner cites precludes a licensee or real party in interest from cross-examining a
`witness at a deposition. Even if Petitioner were correct that only a “party” under 37 C.F.R. §
`42.2 may take cross-examination testimony, both the Board and Petitioner consistently have
`treated Gentex as a party to these IPRs. For example, in its Institution Decisions, the Board
`accepted Patent Owner’s representation that Gentex is a real party in interest, and the Board
`provided notice of trial to Gentex pursuant to 37 C.F.R. § 42.4(b).
`
`The notion that Patent Owner and Gentex’s notices of deposition were false or incorrect is
`baseless—Gentex’s counsel had worked with Petitioner’s counsel to schedule the three
`depositions of Petitioner’s expert with no hint of an objection from Petitioner. On May 3,
`counsel for Petitioner, Patent Owner, and Gentex agreed by email on all three deposition dates
`for Petitioner’s expert. On May 12, Gentex’s counsel notified Petitioner’s counsel again that
`“Gentex/Thales intend to depose” Petitioner’s expert. Petitioner’s counsel acknowledged
`receipt by asking Gentex’s counsel, “Please let us know who will be attending the May 23
`deposition (including any attorneys, court reporters, and videographers) so that we can set
`them up with security access to the building.” Gentex responded in advance of the deposition
`with the names of two attorneys for Gentex, and none in person for Patent Owner (Patent
`Owner’s counsel appeared remotely). Patent Owner’s notices of deposition, which yet again
`indicated that Gentex’s counsel would exercise their right to cross-examine the witness, were
`served on May 12 and May 15. Patent Owner and Gentex would be happy to provide copies
`
` 3
`
`META 1039
`IPR2022-01304
`META V. THALES
`
`

`

`of the aforementioned email correspondence to the Board on request.
`
`Petitioner waited until the first deposition was starting on May 23, after Gentex’s previously
`disclosed counsel had traveled cross-country and was prepared to begin questioning, to raise
`for the first time any concern about Gentex’s participation. As such, leaving aside the merits
`of Petitioner’s objections, Petitioner has not acted “promptly” in raising these objections, as
`required under 37 C.F.R. § 42.53(d)(6), and therefore has waived them. Moreover, even had
`Petitioner not waived its objections through inaction, Patent Owner and Gentex object to
`Petitioner’s extraordinary request that they be precluded after the fact from relying on the
`sworn testimony of Petitioner’s expert on the basis of a supposed procedural defect in how it
`was elicited.
`
`Josh Glucoft
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`2049 Century Park East, 3700 N, Los Angeles, CA 90067
`T +1 310 552 4284 | M +1 310 497 1143 | F +1 310 552 5900
`josh.glucoft@kirkland.com
`-----------------------------------------------------
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`
` 4
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`META 1039
`IPR2022-01304
`META V. THALES
`
`