Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 7
`Entered: October 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`Case IPR2016-00921(Patent 7,814,598 B2)
`Case IPR2016-00922 (Patent 8,226,749 B2)1
`____________
`
`
`
`Before JOSIAH C. COCKS, MICHAEL J. FITZPATRICK, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to issue
`one Order to be docketed in each case. The parties are not authorized to use a
`multiple case caption.
`
`
`571-272-7822
`
`
`
`
`
`Paper 7
`Entered: October 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`Case IPR2016-00921(Patent 7,814,598 B2)
`Case IPR2016-00922 (Patent 8,226,749 B2)1
`____________
`
`
`
`Before JOSIAH C. COCKS, MICHAEL J. FITZPATRICK, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to issue
`one Order to be docketed in each case. The parties are not authorized to use a
`multiple case caption.
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
`The parties are directed to contact the Board via e-mail at Trials@uspto.gov
`prior to the date scheduled below if there is no need to discuss proposed changes to
`this Scheduling Order or proposed motions. If no discussion is needed, the initial
`conference call will be cancelled. The parties are directed 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 this Scheduling Order (i.e., DUE DATES 6 and 7)
`and any motions that are not authorized already by our Rules or by this Scheduling
`Order, which the parties anticipate filing during the proceeding.
`2. Protective Order
`A protective order is not entered in this proceeding unless the parties
`propose one and the panel approves it. If either party files a motion to seal before
`entry of a protective order, a jointly proposed protective order should be presented
`as an exhibit to the motion. We encourage the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See Default
`Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B.
`If the parties choose to propose a protective order deviating from the default
`protective order, they must submit the proposed protective order jointly along with
`a marked-up comparison of the proposed and default protective orders showing the
`deviations.
`The Board has a strong interest in the public availability of the proceedings.
`37 C.F.R. § 42.14. We advise the parties that redactions to documents filed in this
`proceeding should be limited strictly to isolated passages consisting entirely of
`confidential information, and that the thrust of the underlying argument or
`
`
`
`2
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`evidence must be clearly discernible to the public from the redacted versions. We
`also advise the parties that information subject to a protective order will become
`public if identified in a final written decision in this proceeding, and that a motion
`to expunge the information will not necessarily prevail over the public’s interest in
`maintaining a complete and understandable file history. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. at 48,761; 37 C.F.R. § 42.56.
`Notwithstanding the default filing times for an opposition and a reply
`reflected in 37 C.F.R. § 42.25(a):
`(1) an opposition, if any, to a motion to seal is due seven (7) days after
`service of the motion; and
`(2) a reply, if any, to an opposition to a motion to seal is due seven (7) days
`after service of the opposition.
`3. Motion to Amend
`Patent Owner may file a motion to amend without prior authorization from
`the panel. Nevertheless, Patent Owner must confer with the Board before filing
`such a motion. See 37 C.F.R. § 42.121(a). If Patent Owner elects to file a Motion
`to Amend, Patent Owner shall confer with opposing counsel and shall arrange for a
`conference call with the panel and opposing counsel at least ten (10) business days
`before DUE DATE 1 in order to satisfy the conferral requirement. 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.jsp.
`4. Discovery Disputes
`The panel encourages the 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
`
`
`
`3
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`shall meet and confer to resolve such a dispute before contacting the Board. If
`attempts to resolve the dispute fail, either 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 the precise relief to be sought;
`and (d) propose a plurality of dates and times at which both parties are available
`for the conference call.
`5. Depositions
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772, App. D, apply to this
`proceeding. The Board may impose an appropriate sanction or sanctions 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.
`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.
`6. 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).
`
`
`
`4
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`
`Cross-examination ends no later than a week before the filing date for
`2.
`any paper in which the cross-examination testimony is expected to be used. Id.
`7. 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 specifically identified testimony to
`a specifically identified argument or portion of an exhibit. No observation should
`exceed a single, short paragraph. The opposing party may respond to the motion
`for observation. Any response must be equally concise and specific.
`
`B. 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 filed promptly.
`The parties may not stipulate to an extension of DUE DATES 6 and 7, and, if
`either party anticipates the need to alter Due Date 7, the parties shall seek jointly to
`schedule a conference call with the panel immediately upon the identification any
`conflict or potential conflict with Due Date 7. See 37 C.F.R. § 42.10(a) (Each
`party “must designate a lead counsel and a back-up counsel who can conduct
`business on behalf of the lead counsel.”); Office Patent Trial Practice Guide, 77
`Fed. Reg. at 48,758 (“[T]he role of back-up counsel is to conduct business with the
`Office on behalf of lead counsel when lead counsel is not available.”).
`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
`
`
`
`5
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`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.
`1. DUE DATE 1
`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).
`Patent Owner must file any such response or motion to amend by DUE DATE 1.
`If Patent Owner elects not to file anything, Patent Owner must arrange a
`conference call with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response will be deemed waived.
`2. DUE DATE 2
`Petitioner must file any reply to Patent Owner’s response and opposition to
`the motion to amend by DUE DATE 2.
`3. DUE DATE 32
`Patent Owner must file any reply to Petitioner’s opposition to Patent
`Owner’s motion to amend by DUE DATE 3.
`4. DUE DATE 4
`a.
`Each party must file any motion for an observation on the cross-
`examination testimony of a reply witness (see section A.7, above) by DUE
`DATE 4.
`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.
`
`
`2 Please be advised that, if no Motions to Amend are filed in these proceedings,
`Due Date 3 is moot, and the panel may advance Due Dates 4–7 sua sponte.
`
`
`
`6
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`
`5. DUE DATE 5
`a.
`Each party must file any reply to a Petitioner 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.
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
`
`
`
`7
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............2:00 PM ET on November 21, 2016
`
`DUE DATE 1 ........................................................................ January 23, 2017
`Patent Owner’s response to the Petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ April 21, 2017
`Petitioner’s reply to Patent Owner’s response to the Petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. May 22, 2017
`Patent Owner’s reply to Petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................. June 12, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument3
`
`DUE DATE 5 ............................................................................. June 26, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................................July 3, 2017
`Reply to opposition to motion to exclude
`
`
`3 Although the parties may stipulate to a different date for Due Date 4, such
`stipulation may not alter the due date for file a request for oral argument.
`
`
`
`8
`
`
`
`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`DUE DATE 7 ..............................................................................July 12, 2017
`Oral argument (if requested)
`
`
`PETITIONER:
`Mitchell G. Stockwell
`Vaibhav P. Kadaba
`Tiffany L. Williams
`KILPATRICK TOWNSEND & STOCKTON LLP
`mstockwell@kilpatricktownsend.com
`wkadaba@kilpatricktownsend.com
`tiwilliams@kilpatricktownsend.com
`
`PATENT OWNER:
`Christopher J. Renk
`Michael J. Harris
`BANNER & WITCOFF, LTD
`crenk@bannerwitcoff.com
`mharris@bannerwitcoff.com
`bwlitdocket@bannerwitcoff.com
`
`
`
`9
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