In its Order, the Board granted Patent Owner’s request for additional time to cross-examine Petitioner’s expert Dr. Jaeger in connection with this proceeding and related proceeding IPR2014-00492. In particular, a total of seven (7) hours of additional time was authorized. The Board also ordered Petitioner to make Dr. Jaeger available as soon as possible for completion of his cross-examination in accordance with 37 C.F.R.§ 42.53(c)(2).
Petitioner had submitted two declarations of Dr. Jaeger, each of which spanned more than 300 pages. Patent Owner took Dr. Jaeger’s deposition on August 27 and 28, 2014. Patent Owner subsequently alleged that Dr. Jaeger was evasive and uncooperative when asked questions, including questions relating to the prior art. Patent Owner also asserted that Dr. Jaeger “frustrated the deposition process through lengthy pauses between questions and answers” and that Petitioner’s counsel made inappropriate objections suggesting answers to Dr. Jaeger. These assertions were made in a Request for Relief filed by Patent Owner in which Patent Owner sought an additional seven (7) hours to depose Dr. Jaeger. Petitioner, in response, blamed these alleged problems on the nature of the questioning by Patent Owner during the deposition, the number of objections, and so on. In opposing Patent Owner’s Request, Petitioner asserted that it would be prejudiced if Patent Owner were permitted to take additional deposition testimony because Patent Owner would enjoy a strategic advantage in having extra time to review Dr. Jaeger’s initial testimony before the additional deposition testimony.
The Board decided to permit an additional seven (7) hours for Patent Owner to depose Dr. Jaeger. Among the factors the Board cited in reaching this decision were instances of long pauses by Dr. Jaeger during the depositions before answering Patent Owner’s questions, the significant length of Dr. Jaeger’s two declarations, and the fact that Petitioner had offered Patent Owner additional deposition time during one of the two days of depositions. The Board also reminded the parties to exercise courtesy and decorum throughout the rest of the proceeding. To this end, the Board ordered that in future depositions, the parties cannot interrupt each other or the witness, or make speaking objections. The Board particularly emphasized that counsel cannot make objections or statements during any deposition suggesting an answer to a witness, and that all objections should be limited to a single word or term, noting particularly that objections to form must be stated as “Objection, form.”
Finjan, Inc. v. FireEye, Inc., IPR2014-00344
Paper 27: Order on Conduct of the Proceeding
Dated: September 18, 2014
Patent 8,291,499 B2
Before: Bryan F. Moore, Lynne E. Pettigrew, and Frances L. Ippolito
Written by: Ippolito
Related Proceeding: IPR2014-00492