Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 30
`Entered: May 31, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`____________
`
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Petitioner’s Request for Deposition of Robert Iezzi, Ph.D.
`37 C.F.R. § 42.51
`
`
`Petitioner contacted the Board by email to request that it be permitted
`to take the deposition of Robert Iezzi, Ph.D. Petitioner informed the Board
`that Patent Owner opposed this request. A conference call was held May 31,
`2017, and was attended by Judges Kaiser, Abraham, and Ankenbrand, as
`well as counsel for Petitioner and Patent Owner.
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 30
`Entered: May 31, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01462
`Patent 8,324,295 B2
`____________
`
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Petitioner’s Request for Deposition of Robert Iezzi, Ph.D.
`37 C.F.R. § 42.51
`
`
`Petitioner contacted the Board by email to request that it be permitted
`to take the deposition of Robert Iezzi, Ph.D. Petitioner informed the Board
`that Patent Owner opposed this request. A conference call was held May 31,
`2017, and was attended by Judges Kaiser, Abraham, and Ankenbrand, as
`well as counsel for Petitioner and Patent Owner.
`
`
`
`
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`
`
`Petitioner argues that it is entitled to take the deposition of Dr. Iezzi as
`a matter of routine discovery under 37 C.F.R. § 42.51(b)(1)(ii), because Dr.
`Iezzi prepared “affidavit testimony . . . for the proceeding.” Patent Owner
`argues that “the proceeding” in § 42.51(b)(1) is limited to the post-institution
`trial phase, because no routine discovery is permitted during the pre-
`institution phase. Accordingly, Patent Owner argues that Petitioner is not
`entitled to take Dr. Iezzi’s deposition as a matter of routine discovery,
`because Dr. Iezzi’s testimony was prepared only for the pre-institution
`proceeding and has not been relied on by Patent Owner during the post-
`institution proceeding. Patent Owner also argues that there is no need to
`permit Petitioner to take Dr. Iezzi’s deposition outside of the scope of
`routine discovery.
`We are not persuaded that there is a clear need for Petitioner to take
`the deposition of Dr. Iezzi, but we agree with Petitioner that the cross-
`examination of Dr. Iezzi is available as a matter of routine discovery. Under
`37 C.F.R. § 42.51(b)(1)(ii), “[c]ross examination of affidavit testimony
`prepared for the proceeding is authorized.” Under 37 C.F.R. § 42.2, a
`“proceeding” means “a trial or preliminary proceeding.” Accordingly,
`cross-examination of a declarant is authorized whenever that declarant
`prepares “affidavit testimony” for a trial or preliminary proceeding. If the
`testimony is prepared for the preliminary proceeding and not subsequently
`relied upon during the trial, cross-examination of the declarant may be
`unnecessary, but it is permitted. Therefore, we grant Petitioner’s request and
`allow Petitioner to take the deposition of Dr. Iezzi.
`
`2
`
`
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`
`
`During the conference call, Patent Owner inquired into the appropriate
`scope of Dr. Iezzi’s deposition. In particular, Patent Owner argues that the
`deposition should be limited to cross-examining only the direct testimony
`about the asserted grounds of unpatentability on which we instituted trial.
`Petitioner proposes a slightly different rule that would limit the cross-
`examination to those matters on which Dr. Iezzi offered direct testimony that
`is not irrelevant to the grounds of unpatentability on which we instituted
`trial. Patent Owner’s proposed scope is too narrow, and Petitioner’s
`proposed scope is too broad. We agree with Patent Owner in principle that,
`to the extent Dr. Iezzi testified about asserted grounds of unpatentability on
`which we did not institute trial, that testimony is beyond the scope of the
`direct testimony on which Dr. Iezzi may be cross-examined. Generally, “the
`scope of the [cross-]examination is limited to the scope of the direct
`testimony.” 37 C.F.R. § 42.53(d)(5)(ii). But it is also true that “the Federal
`Rules of Evidence shall apply to a proceeding.” Id. § 42.62(a). Under
`Federal Rule of Evidence 611(b), cross-examination also may include
`“matters affecting the witness’s credibility.” Accordingly, to the extent that
`Dr. Iezzi’s testimony constitutes a “matter[] affecting [his] credibility,”
`cross-examination of that testimony will be permitted, even if that testimony
`relates to asserted grounds of unpatentability on which we did not institute
`trial.
`
`
`
`3
`
`
`
`
`
`
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`
`
`It is therefore
`ORDERED that Petitioner’s request to depose Robert Iezzi, Ph.D., is
`granted; and
`FURTHER ORDERED that the scope of the deposition of Robert
`Iezzi, Ph.D., will be governed by 37 C.F.R. § 42.53(d)(5)(ii) and Federal
`Rule of Evidence 611(b).
`
`
`
`
`
`
`4
`
`
`
`
`
`IPR2016-01462
`Patent 8,324,295 B2
`
`PETITIONER:
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`Jonathan D. Hurt
`MCDANIEL & ASSOCIATES, PC
`jhurt@technologylitigators.com
`
`Mark A.J. Fassold
`Jorge Mares
`Watts Guerra LLP
`mfassold@wattsguerra.com
`jmares@wattsguerra.com
`
`
`
`PATENT OWNER:
`
`Joshua A. Lorentz
`Richard Schabowsky
`John D. Luken
`Oleg Khariton
`DINSMORE & SHOHL LLP
`joshua.lorentz@dinsmore.com
`richard.schabowsky@dinsmore.com
`john.luken@dinsmore.com
`oleg.khariton@dinsmore.com
`
`5
`
`
`
`
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