Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 39
`Entered: February 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC COMPANY, LIMITED,
`Patent Owner.
`____________
`
`
`
`Cases:
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`____________
`
`
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`and
`GENERAL INSTRUCTIONS
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 39
`Entered: February 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`
`v.
`
`WILLIS ELECTRIC COMPANY, LIMITED,
`Patent Owner.
`____________
`
`
`
`Cases:
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`____________
`
`
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`and
`GENERAL INSTRUCTIONS
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`A. GENERAL INSTRUCTIONS
`1. Request for an Initial Conference Call
`Unless at least one of the parties requests otherwise, we will not
`conduct an initial conference call as described in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). The
`parties must request an initial conference call if either party is aware of any
`conflicts or concerns with DUE DATES 6 or 7 set forth in the Appendix of
`this Scheduling Order. Any request for an initial conference call must be
`made no later than 25 days after the institution of trial.
`2. Standing Procedure for Requests for Conference Calls
`If the parties request a conference call, including an initial conference
`call, the parties must follow these procedures:
`a. Prior to requesting a conference call, the parties must confer in
`an effort to resolve any issue to be discussed with the Board, or
`be prepared to explain to the Board why such a conference was
`not possible.
`b. Parties may request a conference call by contacting the Board at
`the email address or telephone number listed above the caption
`of this Order. Requests via email are expected and preferred;
`requests via telephone should be reserved for time-critical
`circumstances. Requests by email must copy opposing counsel.
`Requests by telephone should include opposing counsel as
`practicable.
`c. The request must include a list of proposed issues and/or
`motions to be discussed during the call.
`
`2
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`
`d. The request may include a brief background discussion of the
`issue(s) and/or motion(s) to be discussed, but must not include
`arguments. Email correspondence between the parties and the
`Board is for administrative purposes only and is not a part of
`the record.
`e. The request must certify that the parties conferred in
`accordance with 2.a., and must indicate the result of the
`conference (e.g., whether the non-requesting party opposes or
`does not oppose the request).
`f. The request must include a list of dates and times when both
`parties are available for the call.
`3. Motions to Seal, Protective Orders, and Confidential Information
`Papers and exhibits filed with the Board are public unless designated
`as confidential when filed. 37 C.F.R. § 42.14. Papers and exhibits may be
`filed as confidential if filed with a motion to seal. Id. Those papers and
`exhibits will remain under seal provisionally until the Board renders its
`decision on the motion. Id. A motion to seal must include a proposed
`protective order, or must refer to a protective order already approved in the
`proceeding. 37 C.F.R. § 42.54(a). A protective order does not exist in this
`proceeding unless the parties file one and the Board approves it. Board
`approval typically does not occur until its decision on a motion to seal,
`although the parties may request a conference call to seek approval prior to a
`decision on a motion to seal if the particular circumstances of the case so
`require.
`
`3
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`
`Often, a party moves to seal confidential or protective order material
`of the opposing party. In this case, the opposing party is authorized to file a
`response to the motion to seal to address why the motion to seal should be
`granted. Such a response is due within 7 days of the filing of the motion to
`seal and is subject to the same filing requirements (e.g., length, document
`format) as the motion to seal.
`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
`(Aug. 14, 2012). 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 differences; and the parties must
`explain why the proposed deviations from the default protective order are
`necessary.
`The Board has a strong interest in the public availability of the
`proceedings. We advise the parties that redactions to documents filed in this
`proceeding should be limited to isolated passages consisting entirely of
`confidential information, and that the thrust of the underlying argument or
`evidence must be clearly discernible from the redacted versions. We also
`advise the parties that information subject to a protective order will likely
`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 interest in maintaining a complete and understandable file history.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`4
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`
`4. Motions to Amend
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion by requesting a conference call under the
`procedures set forth above. See 37 C.F.R. § 42.121(a). The conference call
`must occur at least two weeks before DUE DATE 1 in order to satisfy the
`conferral requirement. We direct the parties to the Board’s website for
`precedential and representative decisions relating to Motions to Amend,
`among other topics. The parties may access these decisions at:
`https://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/decisions-and-opinions/representative-orders.
`5. 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 requiring
`Board intervention, the parties are to follow the procedures for requesting a
`conference call set forth above.
`6. Depositions
`The parties are advised 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.
`
`5
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`
`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.
`7. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`a. Cross-examination begins after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`b. 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.
`8. Observations on Cross-Examination
`Observations on cross-examination provide a party 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 observations must be concise statements 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 observations. Any
`response must be equally concise and specific.
`9. Additional Formatting Requirements of Papers and Exhibits
`All papers and exhibits must include at least the proceeding number
`and consecutive page numbers on each page. Citations to exhibits may be in
`whatever manner the submitting party deems appropriate (i.e., stamped or
`original pagination). Each page of an exhibit must also include the exhibit
`
`6
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`number. The filing of complete documents and transcripts is encouraged,
`rather than excerpts. Electronic documents filed with the Board should be
`text searchable, to the extent feasible (e.g., having undergone optical
`character recognition).
`
`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 promptly filed. The parties may not stipulate to an extension of DUE
`DATES 6 and 7. Due to scheduling constraints, such as hearing room
`availability, the parties must request a conference call with the panel if
`there are any conflicts that arise with DUE DATE 7 as soon as
`practicable, which will be modified only upon a showing of good cause.
`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.
`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
`
`7
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`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 observations on the cross-examination
`testimony of a reply witness (see section A.7, above) 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. 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.
`
`8
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`9
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. May 23, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... August 15, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................... September 15, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ......................................................................... October 6, 2017
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ....................................................................... October 20, 2017
`Response to observations
`Opposition to motion to exclude
`
`DUE DATE 6 ....................................................................... October 27, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ................................................................... November 15, 2017
`Oral argument (if requested)
`
`
`
`
`10
`
`
`
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`
`PETITIONER:
`
`Paul McGowan
`Ryan Schneider
`Alexis Simpson
`TROUTMAN SANDERS LLP
`paul.mcgowan@troutmansanders.com
`ryan.schneider@troutmansanders.com
`alexis.simpson@troutmansanders.com
`
`Jason Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`jasone-ptab@skgf.com
`
`PATENT OWNER:
`
`Larina Alton
`Douglas Christensen
`CHRISTENSEN FONDER P.A
`alton@cfpatlaw.com
`christensen@cfpatlaw.com
`
`Timothy Bianchi
`SCHWEGMAN LUNDBERG & WOESSNER, P.A
`tbianchi@slwip.com
`
`11
`
`
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