Paper 6
`Trials@uspto.gov
`571-272-7822 Entered: August 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVX CORPORATION,
`Petitioner,
`
`v.
`
`PRESIDIO COMPONENTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00636
`Patent 6,661,639 B2
`____________
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, BEVERLY M. BUNTING, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: August 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVX CORPORATION,
`Petitioner,
`
`v.
`
`PRESIDIO COMPONENTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00636
`Patent 6,661,639 B2
`____________
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, BEVERLY M. BUNTING, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`IPR2016-00636
`Patent 6,661,639 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, or an extension of DUE DATE 4 regarding the parties’
`requests for oral argument (37 C.F.R. § 42.70(a)).
`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. 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
`The parties are directed to contact the Board within a month of this
`decision if there is a need to discuss proposed changes to this Scheduling
`Order or proposed motions. To request a conference call, the parties should
`submit a list of dates and times when they are available for a call. If an
`
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`IPR2016-00636
`Patent 6,661,639 B2
`
`initial conference call is requested, the parties should be prepared to discuss
`any proposed changes to this Scheduling Order and any motions the parties
`anticipate filing during the trial. The parties are directed to the Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,765–66, for guidance in preparing
`for the initial conference call.
`
`2. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`b.
`A motion to amend the patent (37 C.F.R. § 42.121).
`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.
`
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`IPR2016-00636
`Patent 6,661,639 B2
`
`
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 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.
`
`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.
`The panel is available to hear oral argument, if requested, at the
`USPTO main office in Alexandria, Virginia, or the Midwest Regional
`Office, in Detroit, Michigan. If the parties have a preference with regard to
`the above-identified locations, the parties are directed each to state the
`preference in the party’s request for oral argument, including whether the
`parties agree to a stated preference. The Board will set and identify the
`location in the order setting oral argument.1
`
`
`1 The Board considers the parties’ preferences as well as the availability of
`hearing room resources and the panel’s needs in setting the hearing location.
`
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`IPR2016-00636
`Patent 6,661,639 B2
`
`B. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. 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. 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. 48,756, 48,768 (Aug. 14, 2012). 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.
`
`D. PROTECTIVE ORDER
`No protective order has been entered in this proceeding. The parties
`are reminded of the requirement for a protective order when filing a motion
`to seal. 37 C.F.R. § 42.54. If the parties have agreed to a proposed
`protective order, including the Standing Default Protective Order, 77 Fed.
`Reg. 48,756, App. B (Aug 14, 2012), they should file a signed copy of the
`proposed protective order with the motion to seal. If the parties choose to
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`IPR2016-00636
`Patent 6,661,639 B2
`
`propose a protective order other than, or departing from, the default Standing
`Protective Order, they must submit a joint, proposed protective order,
`accompanied by a red-lined version based on the default protective order in
`Appendix B to the Board’s Office Patent Trial Practice Guide.
`
`E. MOTIONS TO AMEND
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, the Patent Owner must confer with the Board
`before filing such a motion. 37 C.F.R. § 42.121(a). We direct the parties to
`the Board’s website for representative decisions relating to Motions to
`Amend among other topics. The parties may access these representative
`decisions at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.js
`p
`
`F. DISCOVERY DISPUTES
`The panel encourages parties to resolve disputes relating to discovery
`on their own and in accordance with the precepts set forth in 37 C.F.R.
`§ 42.1(b). To the extent that a dispute arises between the parties relating to
`discovery, the parties shall meet and confer to resolve such a dispute before
`contacting the Board. If attempts to resolve the dispute fail, a party may
`request a conference call with the Board and the other party in order to seek
`authorization to move for relief.
`In any request for a conference call with the Board to resolve a
`discovery dispute, the requesting party shall: (a) certify that it has conferred
`with the other party in an effort to resolve the dispute; (b) identify with
`specificity the issues for which agreement has not been reached; (c) identify
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`IPR2016-00636
`Patent 6,661,639 B2
`
`the precise relief to be sought; and (d) propose specific dates and times at
`which both parties are available for the conference call.
`
`G. DEPOSITIONS
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript shall cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
`
`
`
`
`
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`IPR2016-00636
`Patent 6,661,639 B2
`
`
`DUE DATE APPENDIX
`INITIAL CONFERENCE CALL ..................................... UPON REQUEST
`DUE DATE 1 .................................................................. November 14, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2 ....................................................................... February 6, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ........................................................................... March 6, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`DUE DATE 4 ......................................................................... March 27, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 ........................................................................... April 10, 2017
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 ........................................................................... April 17, 2017
`Reply to opposition to motion to exclude
`DUE DATE 7 .............................................................................. May 2, 2017
`Oral argument (if requested)
`
`
`
`8
`
`
`
`9
`
`IPR2016-00636
`Patent 6,661,639 B2
`
`PETITIONER:
`
`Michael Houston
`mhouston@foley.com
`
`Paul S. Hunter
`phunter@foley.com
`
`Christopher L. Kalafut
`ckalafut@foley.com
`
`PATENT OWNER:
`Brett A. Schatz
`bschatz@whe-law.com
`
`Gregory F. Ahrens
`gahrens@whe-law.com
`
`Lisa M. A. Nolan
`lnolan@whe-law.com
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