From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Taylor R. Stemler
`Trials
`Cutler, Matthew; Enggas, Sarah; Taylor R. Stemler; Jeffrey Blake; Tom Leach; Michael Erbele; Robert A.
`Kalinsky; Jeremy Miller; Yackey, Scott
`Foreign Witness Depositions | IPR2023-01161 | IPR2024-00004 | IPR2024-00098
`Wednesday, June 19, 2024 6:31:43 PM
`
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`
`Dear Board,
`
`Petitioner noticed remote depositions in the related litigation for several of the third-party
`individuals who have executed declarations on behalf of Petitioner in these proceedings. These
`individuals include Messrs. Lonnemann, Speerschneider, and Funck. They are located in Europe. The
`depositions are currently scheduled for July 2, 9, and 18, 2024.
`
`On June 7, counsel for Petitioner contacted counsel for Patent Owner, asking whether counsel for
`Patent Owner would be willing to stipulate to using the testimony obtained from the foreign
`witnesses through the district court litigation in these IPR proceedings, given that the issues
`pertaining to these witnesses in the litigation substantially overlaps with the issues presented in the
`IPRs. This would avoid multiple, redundant depositions for these third-party witnesses and be more
`efficient for everyone involved.
`
`On June 17, counsel for Patent Owner responded to Petitioner, refusing to stipulate to using the
`deposition transcripts in the IPR proceedings and stating that it will insist on the IPR depositions
`being taken in the United States. To date, Patent Owner has not noticed a single deposition in any of
`the IPR proceedings.
`
`Petitioner would appreciate guidance and direction from the Board on how the parties might obtain
`any necessary evidence while minimizing the burden on these third-party witnesses. Specifically,
`Petitioner requests that the Board permit deposition testimony of these foreign witnesses outside of
`the United States. Additionally, Petitioner seeks guidance from the Board on how discovery for these
`three related IPR proceedings and the district court proceedings might be consolidated so that these
`third-party individuals need not undergo four successive rounds of depositions on the same sets of
`facts that are at issue in these proceedings.
`
`Petitioner would like to schedule a call with the Board to discuss these issues. Petitioner is available
`to discuss these issues during the call on Patent Owner’s proposed motion to amend.
`
`Best regards,
`
`Taylor
`
`Taylor R. Stemler
`
`IPR2024-00098
`Ex. 3004
`
`

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