Trials@uspto.gov
`571-272-7822
`
`
`
`
`Entered:
`
` Paper 10
`
`January 11, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01404
`Patent 6,968,459 B1
`____________
`
`
`Before THOMAS L. GIANNETTI, PETER P. CHEN, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Entered:
`
` Paper 10
`
`January 11, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01404
`Patent 6,968,459 B1
`____________
`
`
`Before THOMAS L. GIANNETTI, PETER P. CHEN, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`
`This Order sets a schedule for trial, including due dates for the parties
`
`to take action upon institution of the trial. See Appendix. The trial will be
`
`administered in a just, speedy, and inexpensive manner such that pendency
`
`before the Board is no more than one year after institution. 37 C.F.R.
`
`§§ 42.1(b) and 42.100(c).
`
`
`
`
`
`A. INITIAL CONFERENCE
`
`An initial conference call will be scheduled only upon request by
`
`either party within thirty (30) days after entry of this Order. To request a
`
`conference call, the parties should consult with each other and submit a list
`
`of proposed dates and times for the call. If an initial conference call is
`
`scheduled, 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
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`for the call, and should be prepared to discuss any proposed changes to the
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`schedule and any motions the parties anticipate filing during the trial.
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`
`
`
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`B. MEET AND CONFER REQUIREMENT
`
`The parties are encouraged to engage in meaningful discussions
`
`before seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for
`
`relief with the Board. At a minimum, before requesting authorization, the
`
`parties shall confer with each other in a good-faith effort to resolve the issue
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`for which relief is to be sought. Only if the parties cannot resolve the issue
`
`on their own may a party request a conference call with the Board in order to
`
`seek authorization to move for relief. In any request for a conference call
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`with the Board, the requesting party shall: (1) certify that it has in good-
`
`faith conferred (or attempted to confer) with the other parties in an effort to
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`resolve the issue; (2) identify with specificity the issue for which agreement
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`2
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`
`
`IPR2016-01404
`Patent 6,968,459 B1
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`has not been reached; (3) state the precise relief to be sought; and (4)
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`propose specific dates and times at which both parties are available for the
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`conference call.
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`
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`C. CONFIDENTIAL INFORMATION
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`The parties must file confidential information using the appropriate
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`availability indicator in PRPS (e.g., “Board and Parties Only”), regardless of
`
`whose confidential information it is. It is the responsibility of the party
`
`whose confidential information is at issue, not necessarily the proffering
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`party, to file the motion to seal, unless the party whose confidential
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`information is at issue is not a party to this proceeding.
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`A protective order does not exist in a case until one is filed in the case
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`and is approved by the Board. If a motion to seal is filed by either party, the
`
`proposed protective order should be presented as an exhibit to the motion.
`
`The parties are urged to operate under the Board’s default protective order,
`
`should that become necessary. See Default Protective Order, Office Patent
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`Trial Practice Guide, 77 Fed. Reg. at 48,769–71 (Appendix B). If the parties
`
`choose to propose a protective order deviating from the default protective
`
`order, they should submit the proposed protective order jointly. A marked-
`
`up comparison of the proposed and default protective orders should be
`
`presented as an additional exhibit to the motion to seal, so that the difference
`
`can be understood readily. The parties should contact the Board if they
`
`cannot agree on the terms of the proposed protective order.
`
`Redactions should be limited strictly to isolated passages consisting
`
`entirely of confidential information. The thrust of the underlying argument
`
`or evidence must be clearly discernible from the redacted version.
`
`3
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`
`Information subject to a protective order will become public if
`
`identified in a final written decision in this proceeding. A motion to
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`expunge the information will not necessarily prevail over the public interest
`
`in maintaining a complete and understandable file history. See Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`
`
`
`
`D. DUE DATES
`
`The Appendix specifies due dates for the parties to take action in this
`
`trial. 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 any
`
`stipulation, specifically identifying the changed due dates, must be filed
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`promptly with the Board. The parties may not stipulate to an extension of
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`DUE DATES 6 and 7. Stipulating to a different DUE DATE 4 does not
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`modify the deadline, set in this Order, for requesting an oral argument.
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`
`
`In stipulating to different dates, 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 E, below).
`
`Additionally, although the filing of a Motion to Amend is authorized
`
`under our Rules, Patent Owner must confer with the Board at least ten (10)
`
`business days prior to DUE DATE 1 before filing any Motion to Amend.
`
`
`
`
`
`4
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`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
`
`and fully briefed 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 F, 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.
`
`
`
`5
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`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.
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`DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`
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`6.
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`
`
`DUE DATE 6.
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`
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`7.
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`
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`
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`DUE DATE 7
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`Oral argument (if requested by either party) is set for DUE DATE 7.
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`E. 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.
`
`
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Trial Practice Guide, 77 Fed.Reg. at 48,772 (App. D), apply to this
`
`proceeding. Pursuant to 37 C.F.R. § 42.12, the Board may impose an
`
`appropriate sanction on any party who fails to adhere to the Testimony
`
`Guidelines, including reasonable expenses and attorney fees incurred by a
`
`party affected by another party’s misconduct.
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`
`
`6
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`
`F. 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 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.
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`The opposing party may respond to the observation. Any response must be
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`equally concise and specific.
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`
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`
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`7
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`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`
`
`
`APPENDIX
`
`INITIAL CONFERENCE CALL……….…..…..…..…..…..... Upon Request
`
`DUE DATE 1……………………………………….………... April 18, 2017
`
`
`
`
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2…………………………………………............. July 18, 2017
`
`
`
`
`
`Petitioner’s reply to patent owner’s response to the petition
`
`Petitioner’s opposition to motion to amend
`
`
`
`DUE DATE 3………………………………….......…….... August 18, 2017
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`
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`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4…………………………………………… September 1, 2017
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
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`
`
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`
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`DUE DATE 5………………………………….....…….. September 15, 2017
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`
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`
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`Response to observation
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`Opposition to motion to exclude
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`
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`DUE DATE 6…………………………………….…….. September 22, 2017
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`
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`Reply to opposition to motion to exclude
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`DUE DATE 7……………………………………………..... October 5, 2017
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`Oral argument (if requested)
`
`
`
`8
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`
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`
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`
`
`FOR PETITIONER:
`
`P. Andrew Riley
`James D. Stein
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Andrew.Riley@finnegan.com
`James.Stein@finnegan.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`
`
`PATENT OWNER:
`
`Lori A. Gordon
`Byron Pickard
`Steven Peters
`STERNE, KESSLER GOLDSTEIN & FOX PLLC
`lgordon-ptab@skgf.com
`bpickard@skgf.com
`speters@skgf.com
`
`9
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