Focal Therapeutics, Inc. v. SenoRx, Inc.

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Patent Trial and Appeal Board

PRECEDENTIAL Paper 19
Standard Operating Procedure 2 . Jul
Entered: July 21, 2014

Designated: 07/10/2019

Trials@uspto.gov
Tel: 571-272-7822

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FOCAL THERAPEUTICS, INC.,
Petitioner,

V.

SENORX, INC.,
Patent Owner.

Case IPR2014-00116
Patent 8,288,745 B2

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent J udges.

BONILLA, Administrative Patent J udge.

ORDER
Conduct of the Proceeding
37 C.F.R. § 42.5

Case IPR2014-00116
Patent 8,288,745 B2
2
In an e-mail correspondence sent to the Board on July 17, 2014
(attached), Counsel for Patent Owner requested a conference call seeking
guidance regarding the Board’s Testimony Guidelines in relation to a
deposition dispute. The Testimony Guidelines are set forth in Appendix D
of the Office Patent Trial Practice Guide. See 77 Fed. Reg. 48756, 48772-
48773 (Aug. 14, 2012). In relevant part, the Testimony Guidelines provides:
Once the cross-examination of a witness has commenced,
and until cross-examination of the witness has concluded,
counsel offering the witness on direct examination shall not: (a)
consult or confer with the witness regarding the substance of
the witness’ testimony already given, or anticipated to be given,
except for the purpose of conferring on whether to assert a
privilege against testifying or on how to comply with a Board
order; or (b) suggest to the witness the manner in which any
questions should be answered.
Id. at 48772 (emphasis added).
Counsel for Patent Owner seeks clarification as to when cross-
examination of a witness “has concluded.” Id. As stated in the e-mail,
during a deposition of Petitioner’s expert conducted on July 14, 2014, after
Patent Owner’s counsel concluded cross-examination, and before redirect
questioning began, “Petitioner’s counsel initiated a private conference with
his witness to discuss his redirect testimony.” See attached e-mail. Counsel
for Patent Owner now asks: “Does the above guideline apply only to the
initial cross-examination of the witness, or apply to the entire deposition,
which can of course include redirect as well as subsequent re-cross of the
witness.” Id.
As noted above, the Testimony Guidelines state that ‘[o]nce the cross-
examination of a witness has commenced, and until cross-examination of the
witness has concluded,” counsel may not, for example, “suggest to the

Case IPR2014-00116
Patent 8,288,745 B2
3
witness the manner in which any questions should be answered.” Id. at
48772 (emphasis added). “Cross-examination” here refers to either cross-
examination or re-cross, but does not refer to the entire time frame between
when cross-examination commences, and until re-cross examination
concludes. The prohibition of conferring with the witness ends once cross-
examination concludes, and, if relevant, begins again when re-cross
commences, and continues until re-cross concludes. The prohibition does
not exist, however, during the time frame between conclusion of cross-
examination and start of re-cross. As noted by our colleagues in Google Inc.
and Apple Inc. v. Jongerius Panoramic Tech., LLC, IPR2013-00191, Paper
48, 3 (PTAB, Feb. 6, 2014), counsel is “permitted to confer with the witness
before redirect examination begins.”
In this particular instance, we address a deposition that already took
place. We note that parties may confer before a deposition occurs, and agree
among themselves regarding such matters. For example, the parties may
agree in advance of a deposition that counsel may not confer with a witness
until after the deposition is over, i.e., after re-cross, if any occurs.
In consideration of the foregoing, it is hereby
ORDERED that Counsel for Patent Owner’s request for a conference
call is denied as moot.

Case IPR2014-00116
Patent 8,288,745 B2
4
PETITIONER:
Matthew Kreeger
Matthew Chivvis
Morrison & Foerster LLP
patentdocket@mofo.com
PATENT OWNER:
Michael Fink
Arnold Turk
Greenblum & Bernstein, P.L.C.
mfink@gbpatent.com
aturk@gbpatent.com

From: MICHAEL FINK [mailto:MFINK@gbpatent.com]
Sent: Thursday, July 17, 2014 1:53 PM
To: Trials
Cc: ARNOLD TURK; Kreeger, Matthew I. (MKreeger@mofo.com); Chivvis, Matthew Alan
(MChivvis@mofo.com)
Subject: IPR2014-00116; Request For Conference Call
Counsel for Patent Owner requests a conference call in IPR2014-00116 to request
clarification of the Testimony Guidelines. The Testimony Guidelines state in
pertinent part:
Once the cross-examination of a witness has commenced, and until
cross-examination of the witness has concluded, counsel offering
the witness on direct examination shall not: (a) Consult or confer
with the witness regarding the substance of the witness’ testimony
already given, or anticipated to be given, except for the purpose of
conferring on whether to assert a privilege against testifying or on
how to comply with a Board order; or (b) suggest to the witness
the manner in which any questions should be answered.
Counsel for Patent Owner requests clarification as to when cross-examination of
the witness has concluded.
At the deposition of Petitioner’s expert conducted on Monday July 14, 2014, after
Patent Owners counsel’s cross examination questioning, before redirect
questioning was to commence, over Patent Owners counsel’s objection,
Petitioner’s counsel initiated a private conference with his witness to discuss his
redirect testimony. Does the above guideline apply only to the initial cross-
examination of the witness, or apply to the entire deposition, which can of course
include redirect as well as subsequent re-cross of the witness.
Counsel for Patent Owner is available for a conference call on July 24 or 25, in the
morning or afternoon. Counsel for Petitioner has indicated that they are available
for a conference call July 24 or 25 in the afternoon California time.
Michael J. Fink, Esq.
Greenblum & Bernstein, P.L.C.
1950 Roland Clarke Place
Reston, Virginia 20191
Voice: (703) 716-1191

Facsimile: (703) 716-1180 email: mfink@gbpatent.com http://www.gbpatent.com