Authorizing Sur-Reply and Motion for Observation of Cross-Examination IPR2013-00580

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Takeaway: Consistent with 37 C.F.R. § 42.53, testimony generally may be taken at any reasonable time and location within the United States.

In its Order, the Board authorized Patent Owner to file a sur-reply to Petitioner’s Reply to Patent Owner Response, but did not authorize Petitioner to file any response to the sur-reply. Also, the Board authorized Patent Owner to file a motion for observations on cross-examination of Mr. Lance Rake, and Petitioner was authorized to file responses to the observations.

Patent Owner had initiated a teleconference to discuss several issues with the Board. The first issue was a request by Patent Owner for leave to file a sur-reply to Petitioner’s Reply to Patent Owner’s Response in order to address what Patent Owner considered to be an improper challenge to the inventorship of the ’447 patent. In this regard, Patent Owner’s Response had sought to prove that the inventors of the ’447 patent had reduced the claimed invention to practice prior to the effective dates of the prior art, and in response, Petitioner’s Reply challenged the ‘447 patent’s inventorship with respect to matters of conception that, according to Patent Owner, went beyond the issue of reduction to practice. Petitioner opposed Patent Owner’s request to file a sur-reply, asserting that it had not raised any issue with respect to inventorship but instead had merely responded to Patent Owner’s arguments regarding reduction to practice of the invention of the ’447 patent.

The Board granted Patent Owner’s request for leave to file a sur-reply. According to the Board, a sur-reply would be helpful and appropriate under the current facts because “Petitioner’s Reply does appear to raise matters pertaining to conception of the inventor of the ’447 patent,” and because Patent Owner bears the burden of establishing “a legally sufficient basis to show prior invention by the inventors of the ’447 patent of the claimed invention prior to the relevant date.” No response by Petitioner to the sur-reply was authorized, however.

Patent Owner had indicated it intended to cross-examine Mr. Lance Rake, upon whose declaration testimony Petitioner had relied upon in its reply briefings. In this connection, Patent Owner had requested leave to file a motion for observations on such cross-examination which Petitioner did not oppose. The Board authorized Patent Owner to file such observations.

The parties were unable to reach agreement on the location and date for the cross-examination of Mr. Rake. In this regard, Patent Owner had asked that the cross-examination be conducted at the law offices of its counsel in Kansas, near the residence of Mr. Rake. Petitioner, in response, indicated that both Petitioner and Mr. Rake preferred the cross-examination to take place in Washington D.C., at the offices of Petitioner’s counsel. As explained to the Board, Mr. Rake was traveling on the East Coast during the target week and thus could be made available in Washington, D.C during that time frame. The Board found that Washington D.C. was a reasonable location for the deposition in view of Mr. Rake having travel on the East Coast that week and the fact that Petitioner’s counsel was in Washington, D.C.

Sensio, Inc. v. Select Brands, Inc., IPR2013-00580
Paper 19: Order on Conduct of the Proceeding
Dated: August 8, 2014
Patent D686,447
Before: Josiah C. Cocks, Thomas L. Giannetti, and Benjamin D.M. Wood
Written by: Cocks