Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper No. 13
`Entered: December 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-01260
`Patent 8,457,113 B2
`____________
`
`
`SCHEDULING ORDER
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`Tel: 571.272.7822
`
`Paper No. 13
`Entered: December 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-01260
`Patent 8,457,113 B2
`____________
`
`
`SCHEDULING ORDER
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`IPR2016-01260
`Patent 8,457,113 B2
`
`
`As an initial matter, no initial conference call is scheduled for the
`above-identified proceedings. The parties are directed to contact the Board
`within a month of this Order if either party disagrees with holding a
`consolidated hearing for the above-identified proceedings or there is a need
`to discuss proposed changes to this Scheduling Order or proposed motions.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66
`(Aug. 14, 2012) (guidance in preparing for the initial conference call).
`
`A. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the above-identified proceedings. 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).
`If requested, a consolidated oral hearing for the aboved-identified
`proceedings will be held on DUE DATE 7. Any representation made by
`counsel at the consolidated hearing will be applicable to and useable in all
`the proceedings which have underlying basis for the representation.
`The parties are reminded that the Testimony Guidelines appended to
`the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (Appendix D),
`
`2
`
`
`
`IPR2016-01260
`Patent 8,457,113 B2
`
`apply to these proceedings. 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. 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.
`
`2. 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.
`
`3. 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.
`
`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 C, below) by
`DUE DATE 4.
`
`3
`
`
`
`IPR2016-01260
`Patent 8,457,113 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.
`
`5. 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.
`
`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.
`
`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
`
`4
`
`
`
`IPR2016-01260
`Patent 8,457,113 B2
`
`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 48,767–68. 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. MOTION TO AMEND
`
`Although the filing of a Motion to Amend is authorized under the trial
`Rules, Patent Owner must confer with the Board, preferreably no less than
`ten business days prior to DUE DATE 1, before filing any Motion to
`Amend.
`
`
`
`
`
`
`5
`
`
`
`IPR2016-01260
`Patent 8,457,113 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .............................................. Upon Request
`
`DUE DATE 1 ............................................................................. April 3, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ June 26, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. July 24, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................ August 14, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................ August 28, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... September 5, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................. September 19, 2017
`Oral argument (if requested)
`
`
`6
`
`
`
`IPR2016-01260
`Patent 8,457,113 B2
`
`
`PETITIONER:
`
`Mark Passler
`Brice Dumais
`AKERMAN LLP
`ip@akerman.com
`brice.dumais@akerman.com
`
`PATENT OWNER:
`
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
`
`
`
`7
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