Takeaway: Deposition transcripts must be filed as exhibits, not papers.

In its Order, the Board indicated that the parties were not authorized to file any motions for sanctions at the present time. Also, the Board ordered that certain papers be expunged from the record and refiled by the Board as exhibits.

Patent Owner had requested a conference call seeking authorization to file a motion for sanctions under 37 C.F.R. § 42.12. Patent Owner’s alleged misconduct by Petitioner during the deposition of Patent Owner’s declarant, Mr. John Nerenberg. It was Patent Owner’s position that “Petitioner’s cross-examination of Mr. Nerenberg went beyond the scope of his direct testimony in violation of 37 C.F.R. § 42.53(d)(5)(ii).” In particular, “Patent Owner argued that Petitioner’s

questions were directed to the issue of enablement under 35 U.S.C. § 112 and designed to elicit testimony that could be used to support a second petition for covered business method patent review, which Petitioner had informed the district court in the related infringement case between the parties that it would be filing soon.” Patent Owner’s proposed motion for sanctions sought to strike certain pages of Mr. Nerenberg’s deposition transcript.

The Board was not persuaded that a motion for sanctions was warranted, at least because: Petitioner had agreed that it would not use the referenced portions of the deposition transcript in a second covered business method patent petition; Patent Owner had only objected to many, but not all, of Petitioner’s questions; and Patent Owner had not sufficiently explained why the particular improper questions would warrant striking pages of the deposition transcript.

On a related point, Petitioner argued that if its actions at Mr. Nerenberg’s deposition constituted misconduct, then Patent Owner’s asking Mr. Jeff Parmet (Petitioner’s declarant) questions about who was paying his fees, and how much he was being paid, at Mr. Parmet’s deposition was equally improper. Nonetheless, the Board denied Petitioner’s request to file a motion for sanctions as well, because, for example, Petitioner had not objected to Patent Owner’s questions during the deposition.

The Board noted that Petitioner had filed the deposition transcripts of Mr. Parmet and Mr. Nerenberg as papers, but that “[d]eposition transcripts must be filed as exhibits, not papers.” See 37 C.F.R. § 42.53(f)(7). Accordingly, the Board indicated that it would expunge and refiled the exhibits in question.

The Board also noted that Patent Owner’s email to the Board requesting a conference call, and Petitioner’s email in response, were improper because they each “contained lengthy arguments explaining the party’s position, citations to the record, and accusations against the other party.” To the contrary, each “email requesting a conference call should copy the other party, indicate generally the relief being requested or the subject matter of the conference call, state whether the opposing party opposes the request, and include multiple times when all parties are available.” The Board went on to note that such emails “may not contain substantive argument and, unless otherwise authorized, may not include attachments.”

Westlake Services, LLC d/b/a Westlake Financial Services v. Credit Acceptance Corp., CBM2014-00008
Paper 48: Order on Conduct of the Proceeding
Dated: August 12, 2014
Patent 6,950,807 B2
Before: Justin T. Arbes, David C. McKone, and Gregg I. Anderson
Written by: Arbes