From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Trials
`Daniels, Scott
`Cherry, Kevin; Mayberry, James; Trials
`FW: Conference call - today - March 5th- IPR2023-00954, -00959, -00995, -00996 – Request for Board
`Intervention
`Tuesday, March 5, 2024 2:04:46 PM
`
`Good afternoon judges,
`
`Please see below.
`
`Thank you,
`Esther
`
`From: Squire, Monté T. <MTSquire@duanemorris.com>
`Sent: Tuesday, March 5, 2024 2:01 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Rafatijo, Homayoon <hrafatijo@spencerfane.com>;
`Robinson, Erick <erobinson@spencerfane.com>; patdunn64@gmail.com; Elliott, Kyle L.
`<KElliott@spencerfane.com>; mbrockhaus@dunlapcodding.com; Allee, J. Lori
`<JAllee@spencerfane.com>; dsorocco@dunlapcodding.com; Woo, Philip
`<PWWoo@duanemorris.com>; McPherson, Patrick D. <PDMcPherson@duanemorris.com>; Belnap,
`Paul H. <PHBelnap@duanemorris.com>
`Subject: RE: Conference call - today - March 5th- IPR2023-00954, -00959, -00995, -00996 – Request
`for Board Intervention
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Honorable Board,
`
`Pursuant to the Board’s instructions in its March 4 and 5 email correspondence, the parties
`hereby submit the following joint email in advance of the teleconference scheduled for March
`5 (today) at 4 pm ET.
`
`Petitioner’s Statement of the Issue and Pertinent Facts
`
`The Phantasy Star Online (PSO) Manual is asserted prior art for grounds challenging claims in
`IPR2023-00995 and IPR2023-00996. The issue concerns evidence relating to the PSO Manual
`and arose during the deposition of Petitioner’s expert David Crane.
`
`This dispute concerns Patent Owner’s improper attempt keep out evidence and terminate a
`deposition of Petitioner’s expert relating to a prior art reference, the Phantasy Star Online
`(PSO) Manual (IPR2023-00995 Ex-1008).
`The PSO Manual is the basis of grounds for challenging claims in IPR2023-00995 and IPR2023-
`
`IPR2023-00959, -00996
`Ex. 3004
`
`

`

`00996. While the Petition presents a multitude of evidence regarding the public availability of
`the PSO Manual as attested to by Petitioner’s prior art searcher Alexander Harry (see e.g.,
`IPR2023-00995, EX1009), and the Board found that “Petitioner has shown sufficient
`circumstantial evidence to establish a reasonable likelihood of prevailing on its contention that
`the PSO Manual was publicly accessible” (IPR2023-00995, Paper 11, p. 30), Patent Owner has
`argued that: “Mr. Harry cannot offer testimony to confirm or deny whether multiple versions
`of the Manual were associated with the Phantasy Star Online game or whether the Manual
`was updated at different times to reflect corrections of errors or upgrades to the video game.
`See e.g., IPR2023-00995, Patent Owner’s Preliminary Response, Paper 9, p. 36.
`
`The evidence at issue is a declaration from Yoshihiro Sakuta, the designer of the PSO Manual.
`Mr. Sakuta’s declaration provides further independent confirmation that the PSO Manual was
`published in the United States before the priority dates of the challenged patents. Mr.
`Sakuta’s declaration also addresses the issue raised by Patent Owner in its Patent Owner
`Preliminary Responses. In particular, Mr. Sakuta’s declaration states inter alia: “No other
`version of the U.S. user manual for the Phantasy Star Online game was created. Nor was the
`U.S. user manual for the Phantasy Star Online game ever updated or revised.”
`
`At the deposition in question, Patent Owner’s counsel asked Petitioner’s expert witness, David
`Crane, “What did you do to prepare for your cross-examination today?” 2-26-2024 Hrg. Tr.
`10:11-12. Mr. Crane testified in part that he reviewed a “declaration from a Mr. Sakuta,
`Yoshihiro Sakuta. And Yoshihiro Sakuta was the original author of that Phantasy Online manual
`that I used as one of my pieces of prior art, in which he testifies as to when that was created,
`when it was published, and such.” Id., 11:15-19. Mr. Crane further testified: “And I had the
`opportunity to actually speak by Zoom to Mr. Sakuta in the past week, and talked to him about
`the creation of that -- that manual for Phantasy Star Online.” Id., 11:23-12:1. After that
`testimony from Mr. Crane, Patent Owner’s counsel thanked Mr. Crane for his “detailed
`answer” to the questioning. Id., 12:2-3.
`
`However, when Petitioner’s counsel attempted to question Mr. Crane about Mr. Sakuta’s
`declaration during the deposition, Patent Owner’s counsel objected and refused to allow Mr.
`Crane to testify as to the declaration or to allow Mr. Sakuta’s declaration to be entered as an
`exhibit to the deposition, and suspended the deposition disallowing any further redirect on
`that exhibit.
`
`The Trial Practice Guide (TPG), Section II, K—with the heading “Challenging Admissibility;
`Motions to Exclude; Motions to Strike”—addresses the situation at hand. Section II, K of the
`TPG provides: “A party wishing to challenge the admissibility of deposition evidence must
`make an objection during the deposition. 37 C.F.R. § 42.64(a).” APPENDIX D to the TPG further
`provides: “2. An objection at the time of the examination -- whether to evidence, to a party’s
`conduct, to the officer’s qualifications, to the manner of taking the testimony, or any aspect of
`the testimony -- must be noted on the record, but the examination still proceeds; testimony is
`
`

`

`taken subject to any such objection.” (emphasis added). In short, the TPG does not allow a
`party to halt a deposition, or unilaterally refuse the admission of evidence during a deposition
`just because that party wants to keep out the evidence. As such, the refusal by Patent Owner’s
`counsel to allow the further questioning of Mr. Crane regarding Mr. Sakuta’s declaration or to
`allow Mr. Sakuta’s declaration to be entered as an exhibit to the deposition was improper.
`
`Patent Owner’s counsel cited to Point 9 of APPENDIX D to the TPG as providing a basis for
`counsel to terminate the examination. Point 9 of APPENDIX D is inapposite, as it essentially
`allows a party to move for a protective order to protect its witness from unreasonable
`harassment. Point 9 states: “At any time during the testimony, the witness or a party may
`move to terminate or limit the testimony on the ground that it is being conducted in bad faith
`or in a manner that unreasonably annoys, embarrasses, or oppresses the witness or party. The
`witness or party must promptly initiate a conference call with the Board to discuss the
`proposed motion. 37 C.F.R. § 42.20(b). If the objecting witness or party so demands, the
`testimony must be suspended for the time necessary to obtain a ruling from the Board, except
`as the Board may otherwise order.” Importantly, Point 9 of APPENDIX D does not allow a party
`to suspend a deposition for purposes of keeping out evidence that the party objects to for
`evidentiary reasons or otherwise wishes to exclude.
`
`Patent Owner’s Statement of Pertinent Facts
`
`IPR2023-00954, -959, 995, and 996 were instituted on December 11, 2023. Mr. Crane
`submitted a declaration and exhibits in support of the Petition as filed. Patent Owner filed and
`served objections to Petitioner’s evidence in all IPRs on December 26, 2023. Petitioner did not
`serve supplemental evidence.
`
`Patent Owner began the deposition of Mr. Crane on February 26, 2024. In response to a
`question from Patent Owner, Mr. Crane indicated he spoke with and reviewed a declaration
`from a Mr. Yoshihiro Sakuta. Mr. Sakuta has not submitted direct testimony in support of the
`Petition, and the Sakuta declaration is not an exhibit to the Petition or Crane declaration as
`filed with the Petition.
`
`The deposition continued for a second day, on February 29, 2024. Patent Owner concluded
`cross-examination on February 29th, and Petitioner began redirect examination. Petitioner
`attempted to introduce the Sakuta declaration, and Patent Owner objected on the record. The
`parties disagreed regarding the admissibility of the Sakuta declaration. Patent Owner
`requested that the deposition be suspended to seek Board intervention. Petitioner resumed,
`and concluded redirect examination on February 29th. Patent Owner concluded re-cross
`examination on February 29th. Patent Owner’s Response is due March 18th.
`
`Brief Description of Patent Owner Arguments
`
`

`

`
`Patent Owner can provide additional detail on the call with the Board; but in brief, the “certain
`evidence” is a declaration of Mr. Yoshiro Sakuta, and it is not relevant because it is not
`evidence in IPR2023-00954, -959, 995, and 996 (“Sony IPRs”). Petitioner did not contact the
`Board during the deposition of Mr. Crane to resolve this evidentiary dispute involving the
`Sakuta declaration and the deposition has since concluded rendering this evidentiary and
`relevancy issue moot. Admission of the Sakuta declaration at this time as evidence is
`prejudicial to Patent Owner.
`
`The Sakuta declaration is not evidence in and thus not relevant to the Sony IPRs. The Sakuta
`declaration first appeared in the Sony IPRs at the transcribed deposition of Petitioner’s
`declarant, Mr. Crane, on February 26, 2024. The Sakuta declaration is new evidence proffered
`by Petitioner as it was not part of the Petition or exhibits filed by Petitioner, was not part of
`Mr. Crane’s uncompelled direct testimony filed with the Petition, and is thus beyond the
`scope of the Petition and Mr. Crane’s direct testimony. The Sakuta declaration was not served
`on Patent Owner as supplemental evidence in response to Patent Owner’s objections to
`evidence. Use of the Sakuta declaration as evidence in the Crane deposition is untimely,
`irrelevant to the direct testimony, and prejudicial to Patent Owner.
`
`Petitioner did not resolve this dispute during the deposition of Mr. Crane, so this evidentiary
`and relevancy issue is moot. Cross-examination of Mr. Crane began on February 26, and
`continued on February 29th. During cross-examination of Mr. Crane, the deponent, in
`response to a question from Patent Owner, indicated he reviewed a declaration from a Mr.
`Yoshiro Sakuta. Patent Owner did not inquire further about the Sakuta declaration. During
`redirect examination, Petitioner attempted to introduce the Sakuta declaration as an exhibit,
`and Patent Owner objected on the record pursuant to Board Rules, the Consolidated Trial
`Practice Guide, and the Federal Rules of Evidence. The scope of cross-examination is limited to
`the scope of the direct testimony, and redirect examination is limited to the scope of cross-
`examination The parties disagreed on the admissibility of the Sakuta declaration. Patent
`Owner indicated a call with the Board was needed to resolve the dispute. Petitioner did not
`contact the Board to resolve the dispute during redirect examination. Thereafter, Petitioner
`concluded redirect examination, and Patent Owner concluded re-cross examination, and the
`deposition of Mr. Crane concluded on February 29th. Mr. Crane did not state that he relied on
`the Sakuta declaration in the preparation of his declaration submitted with the Petition.
`
`Sincerely,
`Monté T. Squire
`Counsel for Petitioner
`
`Monté T. Squire
`Partner
`
`Duane Morris LLP
`
`

`

`1201 North Market St., Suite 501
`Wilmington, DE 19801
`P: +1 302 657 4918
`F: +1 302 397 2543
`C: +1 302 229 3813
`
`MTSquire@duanemorris.com
`www.duanemorris.com
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, March 5, 2024 7:56 AM
`To: Trials <Trials@USPTO.GOV>; Squire, Monté T. <MTSquire@duanemorris.com>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Rafatijo, Homayoon <hrafatijo@spencerfane.com>;
`Robinson, Erick <erobinson@spencerfane.com>; patdunn64@gmail.com; Elliott, Kyle L.
`<KElliott@spencerfane.com>; mbrockhaus@dunlapcodding.com; Allee, J. Lori
`<JAllee@spencerfane.com>; dsorocco@dunlapcodding.com; Woo, Philip
`<PWWoo@duanemorris.com>; McPherson, Patrick D. <PDMcPherson@duanemorris.com>; Belnap,
`Paul H. <PHBelnap@duanemorris.com>
`Subject: Conference call - today - March 5th- IPR2023-00954, -00959, -00995, -00996 – Request for
`Board Intervention
`
`Counsel,
`
`Correction: the conference call is scheduled for today (March 5th) at 4 pm ET.
`
`IMPORTANT: No later than 2pm, Tuesday, March 5, Petitioner shall send a joint email to the Board
`containing a detailed statement of the issue, pertinent facts on which the parties agree, and
`describing in detail the “certain evidence” upon which Petitioner desires Mr. Crane’s testimony.
`
`Also in the email, Petitioner shall submit a brief explanation of the necessity for Mr. Crane’s
`testimony on this issue, and why the evidence and testimony is relevant in this proceeding. Patent
`Owner shall submit a brief description of their arguments as to why the evidence and Mr. Crane’s
`testimony is not relevant.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, March 4, 2024 5:13 PM
`To: Squire, Monté T. <MTSquire@duanemorris.com>; Trials <Trials@USPTO.GOV>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Rafatijo, Homayoon <hrafatijo@spencerfane.com>;
`Robinson, Erick <erobinson@spencerfane.com>; patdunn64@gmail.com; Elliott, Kyle L.
`<KElliott@spencerfane.com>; mbrockhaus@dunlapcodding.com; Allee, J. Lori
`<JAllee@spencerfane.com>; dsorocco@dunlapcodding.com; Woo, Philip
`
`

`

`<PWWoo@duanemorris.com>; McPherson, Patrick D. <PDMcPherson@duanemorris.com>; Belnap,
`Paul H. <PHBelnap@duanemorris.com>
`Subject: RE: IPR2023-00954, -00959, -00995, -00996 – Request for Board Intervention
`
`Counsel,
`
` A
`
` conference call with the Panel has been scheduled for Tuesday, May 5, 4pm ET.
`
`
`The dial-in number is: 877-937-3589 and the passcode is: 1563929#.
`
`IMPORTANT: No later than 2pm, Tuesday, May 5, Petitioner shall send a joint email to the Board
`containing a detailed statement of the issue, pertinent facts on which the parties agree, and
`describing in detail the “certain evidence” upon which Petitioner desires Mr. Crane’s testimony.
`
`Also in the email, Petitioner shall submit a brief explanation of the necessity for Mr. Crane’s
`testimony on this issue, and why the evidence and testimony is relevant in this proceeding. Patent
`Owner shall submit a brief description of their arguments as to why the evidence and Mr. Crane’s
`testimony is not relevant.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Squire, Monté T. <MTSquire@duanemorris.com>
`Sent: Monday, March 4, 2024 10:03 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Tuttle, Kevin <ktuttle@spencerfane.com>; Rafatijo, Homayoon <hrafatijo@spencerfane.com>;
`Robinson, Erick <erobinson@spencerfane.com>; patdunn64@gmail.com; Elliott, Kyle L.
`<KElliott@spencerfane.com>; mbrockhaus@dunlapcodding.com; Allee, J. Lori
`<JAllee@spencerfane.com>; dsorocco@dunlapcodding.com; Woo, Philip
`<PWWoo@duanemorris.com>; McPherson, Patrick D. <PDMcPherson@duanemorris.com>; Belnap,
`Paul H. <PHBelnap@duanemorris.com>
`Subject: IPR2023-00954, -00959, -00995, -00996 – Request for Board Intervention
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Honorable Board,
`
`Petitioner respectfully requests the Board’s intervention and permission to proceed with the
`deposition of Petitioner’s declarant David Crane, which was suspended in part on Thursday
`evening, February 29 by Patent Owner’s counsel during Petitioner’s redirect examination of
`
`

`

`the witness due to Patent Owner’s objection to Petitioner’s use of certain exhibits during the
`redirect examination.
`
`The parties conferred regarding this dispute both on and off the record at Mr. Crane’s
`deposition, but were unable to reach resolution.
`
`Patent Owner’s statement of the issue:
`Patent Owner objects to Petitioner’s characterization of the issue as being substantive
`argument. Patent Owner opposes Petitioner’s request. If the Board desires a call, the subject
`matter of the dispute is an evidentiary issue that occurred during Patent Owner’s deposition
`of Petitioner’s declarant. Patent Owner concluded cross-examination and re-cross
`examination, and Petitioner concluded redirect examination.
`
`Should the Board desire a conference call with the parties, respective counsel for the parties
`are available for a conference call during the following times:
`
`Tuesday, March 5, 11 am – 12 pm ET or 4-5 pm ET
`Wednesday, March 6, 10 am – 12 pm ET or 3-5 pm ET
`
`Sincerely,
`Monté T. Squire
`Counsel for Petitioner
`
`Monté T. Squire
`Partner
`
`Duane Morris LLP
`1201 North Market St., Suite 501
`Wilmington, DE 19801
`P: +1 302 657 4918
`F: +1 302 397 2543
`C: +1 302 229 3813
`
`MTSquire@duanemorris.com
`www.duanemorris.com
`
`
`
`For more information about Duane Morris, please visit http://www.DuaneMorris.com
`
`Confidentiality Notice: This electronic mail transmission is privileged and confidential and is intended only for the review of the party to
`whom it is addressed. If you have received this transmission in error, please immediately return it to the sender. Unintended transmission
`shall not constitute waiver of the attorney-client or any other privilege.
`
`