`571-272-7822
`
`
`
`
`
`
`
`Paper 17
`Date: July 27, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner,
`____________
`
`Case IPR2016-00252
`Patent 7,303,469
`____________
`
`
`Before MICHAEL W. KIM and RICHARD E. RICE, Administrative Patent
`Judges.
`
`KIM, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-00252
`Patent 7,303,469
`
`
`
`On July 25, 2016, a conference call was held between counsel for Patent
`
`
`
`Owner, counsel for Petitioner, and Judges Kim and Rice. A court reporter was also
`
`on the call.1 Patent Owner requested the call to seek authorization to file two
`
`motions:
`
`(1) a Motion to Strike the declaration of Mr. Derek James (Ex.
`1007), as Petitioner denied Patent Owner’s request to depose the
`declarant; and
`
`(2) a contingent Motion to Terminate, as Petitioner cannot meet
`its burden of proving prior art status of the sole primary reference in
`this proceeding.
`
`Due Date 1 is currently set for July 28, 2016. For the reasons set forth in the call,
`
`the request for authorization to file either motion is denied. The Board provides
`
`further the following brief analysis.
`
`For the Motion to Strike, the Board agrees with Patent Owner that the
`
`burden is on Petitioner to produce a witness for cross-examination, and that
`
`Petitioner’s failure to make Mr. James available for deposition indicates that
`
`Petitioner should not be permitted to rely on the testimony of Mr. James. We
`
`acknowledge that Petitioner indicated that it made diligent efforts to contact Mr.
`
`James after Patent Owner first requested to depose him on June 30th, and that some
`
`panels of the Board have merely discounted the weight given testimony not subject
`
`to cross-examination. Petitioner did not indicate that additional time would
`
`remedy the situation, nor did either party propose or seek an extension of Due Date
`
`1 for these purposes.2 On these facts and at this juncture in the proceeding, we are
`
`persuaded that in weighing the various factors, the equities as a whole fall in favor
`
`
`1 A transcript of the call was filed on July 26, 2016 as Exhibit 2011.
`2 Patent Owner indicated that they would not be filing a motion to amend,
`effectively rendering superfluous Due Date 3 and affording an opportunity to
`adjust Due Dates 1 and 2 so as to provide additional time.
`
`2
`
`
`
`IPR2016-00252
`Patent 7,303,469
`
`
`of Patent Owner. Primarily, Petitioner should have known when it submitted Mr.
`
`
`
`James’s Declaration that the witness would need to be available for deposition, and
`
`we are persuaded that it would be unfair to Patent Owner for us to hold against
`
`them, and to require them to respond to, testimony of a witness whom they did not
`
`have the opportunity to depose, especially in light of the impending due date for
`
`filing a patent owner response. Nevertheless, while Petitioner is not permitted to
`
`rely on the Declaration of Mr. James, we decline to actually strike the Declaration
`
`from the record, as it provides a basis for the public to understand the proceeding
`
`as a whole.
`
`For the Motion to Terminate, with our determination that Petitioner is not
`
`permitted to rely on the Declaration of Mr. James, the issue becomes whether
`
`Petitioner has shown sufficiently that the “Let’s Made a Deal” reference is prior
`
`art. Such issues are routinely addressed by patent owners in the patent owner
`
`response, and, thus, we are unpersuaded a separate Motion to Terminate is
`
`necessary.
`
`It is
`
`ORDERED that unless Mr. James is made available for cross-examination,
`
`Petitioner is not permitted to rely on the Declaration of Mr. James (Ex. 1007); and
`
`FURTHER ORDERED that Patent Owner’s request for authorization to file
`
`a Motion to Strike and Motion to Terminate is denied.
`
`3
`
`
`
`
`
`
`
`
`
`IPR2016-00252
`Patent 7,303,469
`
`For PETITIONER:
`
`Andrea Reister
`areister@cov.com
`
`Jay Alexander
`jalexander@cov.com
`
`
`
`For PATENT OWNER:
`
`Holby Abern
`habern@ngelaw.com
`
`Kevin Cukierski
`kcukierski@ngelaw.com
`
`Michelle Holoubek
`Mholoubek-PTAB@skgf.com
`
`Robert Sterne
`rsterne@skgf.com
`
`Adam Masia
`amaisa@ngelaw.com
`
`
`
`4
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