Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: September 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CQG, INC. and CQG, LLC (f/k/a CQGT, LLC),
`Petitioner,
`
`v.
`
`CHART TRADING DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case CBM2016-00048
`Patent 8,060,435 B2
`____________
`
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: September 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CQG, INC. and CQG, LLC (f/k/a CQGT, LLC),
`Petitioner,
`
`v.
`
`CHART TRADING DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case CBM2016-00048
`Patent 8,060,435 B2
`____________
`
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`CBM2016-00048
`Patent 8,060,435 B2
`
`A. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate to different dates for DUE
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
`notice of the stipulation, specifically identifying the changed due dates, must
`be promptly filed. The parties may not stipulate to an extension of DUE
`DATES 6 and 7.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony (see section B, below).
`The parties are reminded that the Testimony Guidelines appended to
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
`(Aug. 14, 2012) (Appendix D), apply to this proceeding. The Board may
`impose an appropriate sanction for failure to adhere to the Testimony
`Guidelines. See 37 C.F.R. § 42.12. For example, reasonable expenses and
`attorneys’ fees incurred by any party may be levied on a person who
`impedes, delays, or frustrates the fair examination of a witness.
`
`1. INITIAL CONFERENCE CALL
`An initial conference call is not scheduled in this case. A party may
`request an initial conference call within 25 days after the institution of trial.
`A party requesting an initial conference call shall: (a) identify the proposed
`motions, if any, to be discussed during the call; and (b) propose two or more
`dates and times when both parties are available for the call. When an initial
`conference call is scheduled in response to a request, the parties are directed
`
`2
`
`
`
`CBM2016-00048
`Patent 8,060,435 B2
`
`to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66
`(Aug. 14, 2012), for guidance in preparing for the initial conference call and
`should be prepared to discuss any proposed changes to the schedule in this
`proceeding.
` We note the following guidance:
`The parties shall not to use the Motion to Exclude for any purpose
`other than to raise admissibility issues under the Federal Rules
`of Evidence. If an issue arises with regard to a paper being out
`of proper scope, e.g., belatedly raising new issues or belatedly
`submitting new evidence, the parties shall contact the Board in
`a timely manner to raise the matter.
`Supplemental evidence is not the same as supplemental information,
`and that the rules do not contemplate more than one cycle of
`objection to evidence and subsequent supplemental evidence to
`cure the objection.
`A motion for Observation on Cross-Examination should not be
`argumentative and that the entry for each identified item is
`limited to one short paragraph. It does not mean that arguments
`can be presented so long as they are less than one short
`paragraph in length. Also, circumventing the length
`requirement by use of footnote is inappropriate.
`
`2. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.220), and
`b.
`A motion to amend the patent (37 C.F.R. § 42.221).
`
`3
`
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`CBM2016-00048
`Patent 8,060,435 B2
`
`The patent owner must file any such response or motion to amend by DUE
`DATE 1. If the patent owner elects not to file anything, the patent owner
`must arrange a conference call with the parties and the Board. The patent
`owner is cautioned that any arguments for patentability not raised in the
`response will be deemed waived.
`
`3. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`
`4. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`
`5. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section C, below) by
`DUE DATE 4.
`b.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
`DUE DATE 4.
`
`6. DUE DATE 5
`a.
`Each party must file any response to an observation on cross-
`examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 5.
`
`4
`
`
`
`CBM2016-00048
`Patent 8,060,435 B2
`
`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`B. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. See 37 C.F.R. § 42.53(d)(2).
`2.
`Cross-examination ends no later than a week before the filing
`date for any paper in which the cross-examination testimony is expected to
`be used. See id.
`
`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`A motion for observation on cross-examination provides the parties
`with a mechanism to draw the Board’s attention to relevant cross-
`examination testimony of a reply witness because no further substantive
`paper is permitted after the reply. See Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,768. The observation must be a concise statement of the
`relevance of precisely identified testimony to a precisely identified argument
`or portion of an exhibit. Each observation should not exceed a single, short
`paragraph. The opposing party may respond to the observation. Any
`response must be equally concise and specific.
`
`5
`
`
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`CBM2016-00048
`Patent 8,060,435 B2
`
`D. MOTION TO AMEND
`
`The parties are reminded that 37 C.F.R. § 42.24 was amended
`effective May 19, 2015, and that the page limits that pertain to motions to
`amend are as follows: any motion to amend is limited to 25 pages;
`Petitioner’s opposition to any motion to amend is limited to 25 pages; and
`Patent Owner’s reply to the opposition to any motion to amend is limited to
`12 pages. 37 C.F.R. § 42.24(a)–(c). The claim listing does not count
`towards the page limit for a motion to amend, and may be contained in an
`appendix. 37 C.F.R. § 42.24(a)(1).
`If Patent Owner decides to file a motion to amend claims, it must
`request a conference call with the Board more than two weeks prior to the
`due date of such a motion, so that a conference call may be arranged at least
`two weeks prior to the due date of such a motion and so that the parties will
`have sufficient time to consider any guidance we may provide. With respect
`to any feature Patent Owner proposes to add by way of a substitute claim,
`Patent Owner should be aware of the duty of candor requirement under
`37 C.F.R. § 42.11. The initial focus should be on the individual features
`proposed to be added, and secondary references making up deficiencies of a
`primary reference are pertinent. We direct attention of the parties to
`MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 3
`(PTAB July 15, 2015) (Paper 42) (precedential), which states:
`Thus, when considering its duty of candor and good faith
`under 37 C.F.R. § 42.11 in connection with a proposed
`amendment, Patent Owner should place initial emphasis on each
`added limitation. Information about the added limitation can still
`be material even if it does not include all of the rest of the claim
`limitations. See VMWare, Inc. v. Clouding Corp., Case
`IPR2014-01292, slip op. at 2 (PTAB Apr. 7, 2015) (Paper 23)
`(“With respect to the duty of candor under 37 C.F.R. § 42.11,
`
`6
`
`
`
`CBM2016-00048
`Patent 8,060,435 B2
`
`counsel for Patent Owner acknowledged a duty for Patent Owner
`to disclose not just the closest primary reference, but also closest
`secondary reference(s) the teachings of which sufficiently
`complement that of the closest primary reference to be
`material.”).
`E. PATENT OWNER RESPONSE AND PETITIONER’S REPLY
`
`Effective May 2, 2016, 37 C.F.R. § 42.24 was amended to provide
`that the patent owner response is limited to 14,000 words, and that
`Petitioner’s reply to the patent owner response is limited to 5,600 words.
`See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1); Amendments to the Rules of
`Practice for Trials Before the Patent and Trial Appeal Board, Final Rule,
`81 Fed. Reg. 18,750, 18,765 (April 1, 2016).
`
`F. FORMAT AND FILING OF DOCUMENTS
`
`The parties are reminded that 37 C.F.R. § 42.6 was amended effective
`May 19, 2015, and now requires the use of 14-point, Times New Roman
`proportional font, with normal spacing. The parties should familiarize
`themselves with the requirements of 37 C.F.R. § 42.6. Any filing that does
`not comply with 37 C.F.R. § 42.6 may be expunged.
`
`G. PROTECTIVE ORDER
`A protective order will not be entered in this proceeding unless the
`parties file one and the Board approves it. The parties are encouraged to
`adopt the Board’s default protective order if a protective order is necessary.
`See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,769 (App. B). If the parties choose to propose a protective order
`deviating from the default protective order, they must submit the proposed
`protective order along with a marked-up comparison of the proposed and
`default protective orders showing the differences. If either party files a
`
`7
`
`
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`CBM2016-00048
`Patent 8,060,435 B2
`
`motion to seal before entry of a protective order, a proposed protective order
`should be presented as an exhibit to the motion that has been discussed with
`the opposing party and, preferably, be jointly proposed. If the protective
`order is not jointly proposed, the proponent of the order should identify
`where the parties differ in the proposed language of the order.
`
`
`
`
`
`
`8
`
`
`
`CBM2016-00048
`Patent 8,060,435 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ................................................................................. 12/12/2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................................... 3/13/2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................................... 4/13/2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ..................................................................................... 5/4/2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ................................................................................... 5/18/2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................................. 5/25/2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................................... 6/8/2017
`Oral argument (if requested)
`
`
`9
`
`
`
`CBM2016-00048
`Patent 8,060,435 B2
`
`PETITIONER:
`
`Adam Kelly
`William Kramer
`William Voller
`Arthur Yuan
`LOEB & LOEB LLP
`akelly@loeb.com
`wkramer@loeb.com
`wvoller@loeb.com
`ayuan@loeb.com
`
`
`
`
`
`PATENT OWNER:
`
`James Barney
`Timothy McAnulty
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`james.barney@finnegan.com
`timothy.mcanulty@finnegan.com
`
`10
`
`
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