Paper Entered: 15 December 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: 15 December 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ARISDYNE SYSTEMS, INC., Petitioner, v. CAVITATION TECHNOLOGIES, INC., Patent Owner. Case IPR Before FRED E. McKELVEY, JAMES T. MOORE, and BRIAN P. MURPHY, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. ORDER Cross Examination 37 C.F.R. 42.5(a) I. Background Conference calls were held at approximately noon on 7 December 2015 and at approximately noon on 10 December The purpose of the conference calls was to advise the parties that the Board had determined that cross-examination of Patent Owner s witnesses

2 would take place live before at least one member of the panel. The witnesses are: (1) Dr. Maxim Promtov (direct testimony Ex. 2016); (2) Dr. Vijayanand S. Moholkar (direct testimony Ex. 2015); and (3) Dr. Ir. Marc Kellens (direct testimony Ex. 2017). II. Dr. Promtov Dr. Promtov is a resident of Russia. According to counsel for Patent Owner, Dr. Promtov needs a visa from the U.S. Embassy in Russia to travel to the United States. The visa could be what was referred to during the conference calls as a business visa. An alternative visa would be a tourist visa. As of 10 December 2015, Dr. Promtov had not secured a visa. Moreover, during the conference calls it became apparent that Dr. Promtov may not obtain a visa and, if a visa is obtained, that it may not be obtained within a time that would permit cross-examination to take place such that the IPR could be completed within the one-year time period required by law. The Board understands that cross-examination of Dr. Promtov would take place through an interpreter (English to Russian and Russian to English). III. Dr. Moholkar Dr. Moholkar is a resident of India. According to counsel for the Patent Owner, Dr. Moholkar s father is ill. 2

3 Further according to counsel, Dr. Moholkar is an only child, Dr. Moholkar s mother is deceased, and Dr. Moholkar is the sole individual who can attend to his father during the illness. Still further according counsel, while it is not entirely clear when Dr. Moholkar s father may overcome the illness, it was suggested that the father may be sufficiently recuperated by 24 February 2015, which would allow Dr. Moholkar to thereafter travel to the United States for crossexamination. The Board understands that Dr. Moholkar would be cross-examined in English without a need for an interpreter. IV. Dr. Kellens Dr. Kellens is a resident of Belgium. Based on discussion during the conference calls, the Board understands that currently there is no apparent difficulty with Dr. Kellens traveling to the United States for cross-examination. The Board also understands that Dr. Kellens would be cross-examined in English without a need for an interpreter. V. Discussion A. Live Cross-Examination In this case, the Board has elected to hear cross-examination of Patent Owner s witnesses live before at least one member of the panel. However, as the discussion above indicates, there may be problems with the availability of Patent Owner s witnesses. As a result, the Board adopts a Plan A in default of which Plan B shall be put into place. 3

4 B. Plan A Plan A assumes that Dr. Promtov, Dr. Moholkar, and Dr. Kellens are all available for cross-examination. Cross-examination will take place before at least one member of the panel in a hearing room at the Board located at Madison East, 600 Dulany St., Alexandria, Va., on 17 February 2016 through 19 February An additional order setting out specific times for specific witnesses will issue sometime before 17 February A conference call to discuss a specific schedule is set for 12 noon on 9 February Petitioner s Reply is due on before 21 March C. Plan B Plan B assumes that one or more of Patent Owner s witnesses (Dr. Promtov, Dr. Moholkar, and/or Dr. Kellens) will not be able to travel to the United States for cross-examination. In the event it is necessary to implement Plan B, Patent Owner is authorized to (1) substitute a witness for any witness who is not available to travel to the United States for cross-examination or is otherwise unavailable and (2) file a Replacement Opposition and Replacement Declaration(s) on or before 28 January If a Replacement Opposition is required, the original Opposition (Paper 31) and any testimony no longer relied upon (e.g., a declaration of a witness that it no longer available) will be expunged from the record. 4

5 As in the case of Plan A, Petitioner s Reply will be due on or before 21 March D. Other Due Dates Due Date 4 through Due Date 7 remain unchanged. See Paper 17, page 9. E. Discussion Patent Owner chose it witnesses. Unfortunately, there exists a possibility that one or more of those witnesses may not be available for cross-examination in the United States. Fortunately, there is time for Patent Owner to determine whether its witnesses will be available (Plan A) and, if not, to take action to present a suitable defense (Plan B). An alternative Plan B is consistent with a just resolution of this IPR. 37 C.F.R. 42.1(b). It is true that Patent Owner selected its witnesses and presumably advised those witnesses that they would have to travel to the United States for cross-examination. However, it is also true that things do not always work out as planned. Fortunately, the possible unavailability of witnesses came to the Board s attention in time to permit an alternative plan to be developed and implemented. In addition to permitting Patent Owner to put on an alternative defense (Plan B), under either Plan A or Plan B, the Board will be able to enter a final written decision within the one-year period required by law. There is no prejudice to Petitioner, because it will have adequate time to file a Reply after cross-examination on February Due Date 3 to file an opposition to a motion to amend has become unnecessary and therefore Due Date 2 can be reset as Due Date 3. In 5

6 addition, the time for Petitioner to file a Reply (Due Date 3) will be enlarged from 17 March 2015 to 21 March On or before 21 January 2016, Patent Owner shall advise Petitioner and the Board whether it plans to proceed under Plan A or Plan B, the choice being that of Patent Owner. F. Testimony through an Interpreter In the event a witness will testify through an interpreter, the parties are advised that the Guidelines and procedure set out in Wojciak v. Nishiyama, 61 USPQ2d 1573 (BPAI 2001), shall apply. G. Testimony Order Ordinarily, the cross-examining party elects the order in which witnesses are cross-examined. The parties should plan on being somewhat flexible in this regard given the circumstances. On or before 4 February 2016, Petitioner should advise Patent Owner of the order in which it would like to cross-examine Patent Owner s witnesses and Patent Owner should make every effort to accommodate Petitioner s order of cross-examination. H. Summary of Due Dates (1) 21 January 2016: Patent Owner to elect Plan A or Plan B. (2) 28 January 2016: If Patent Owner elects Plan B, Patent Owner to file Replacement Opposition and Replacement Declaration(s). (2) 04 February 2016: Petitioner to notify Patent Owner of order in which witnesses are to be cross-examined. (3) 9 February 2016 (12 noon): Conference call. (4) February 2016: Cross-examination. (5) 21 March 2016: Petitioner s Reply Due. 6

7 I. Conference Call In the event of a need for further discussion on the matters discussed in this order, the parties should feel free to place a conference call to the Board for appropriate clarification. For PETITIONER: J. Gregory Chrisman PEARNE & GORDON LLP gchrisman@pearne.com For PATENT OWNER: Michael A. DiNardo Scott W. Kelley KELLY & KELLY, LLP Mike@Kelly-KelleyLaw.com Scott@Kelly-KelleyLaw.com 7