Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 11
`Date: April 7, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES INCORPORATED,
`Petitioner,
`
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.
`(f/k/a/ LUBRIZOL SPECIALTY PRODUCTS, INC.),1
`Patent Owner.
`____________
`
`Case IPR2016-01901
`Patent 8,450,249 B2
`____________
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`1 Patent Owner represents that its name has changed from Lubrizol Specialty
`Products, Inc. to LiquidPower Specialty Products Inc., and that LiquidPower
`Specialty Products Inc. is the owner of U.S. Patent No. 8,450,249 B2 by
`assignment, holding all rights, title, and interest to that patent. Paper 8, 2.
`Accordingly, we modify the original case caption to reflect that change.
`
`
`571-272-7822
`
`
`
`
`
`Paper 11
`Date: April 7, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES INCORPORATED,
`Petitioner,
`
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.
`(f/k/a/ LUBRIZOL SPECIALTY PRODUCTS, INC.),1
`Patent Owner.
`____________
`
`Case IPR2016-01901
`Patent 8,450,249 B2
`____________
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`1 Patent Owner represents that its name has changed from Lubrizol Specialty
`Products, Inc. to LiquidPower Specialty Products Inc., and that LiquidPower
`Specialty Products Inc. is the owner of U.S. Patent No. 8,450,249 B2 by
`assignment, holding all rights, title, and interest to that patent. Paper 8, 2.
`Accordingly, we modify the original case caption to reflect that change.
`
`
`
`IPR2016-01901
`Patent 8,450,249 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.
`
`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.
`
`INITIAL CONFERENCE CALL
`
`The parties are directed to contact the Board within a month of this
`
`decision to schedule an initial conference call if 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).
`
`
`
`2
`
`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`DUE DATE 1
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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. The patent owner is reminded that it must confer with the Board
`
`before filing a motion to amend. 37 C.F.R. § 42.121(a). The patent owner
`
`should contact the Board to request any such conference in sufficient time to
`
`ensure that the conference is conducted at least one week before 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.
`
`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.
`
`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.
`
`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.
`
`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.
`
`
`
`3
`
`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`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.
`
`DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`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 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
`
`
`
`4
`
`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`should not exceed a single, short paragraph. The opposing party may
`
`respond to the observation. Any response must be equally concise and
`
`specific.
`
`D. INTERLOCUTORY DISPUTES
`
`
`
`To the extent that a dispute arises between the parties during the trial,
`
`the parties shall meet and confer to resolve such 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, 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 specific dates and times at which both
`
`parties are available for the conference call.
`
`
`
`
`
`5
`
`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ June 26, 2017
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. September 18, 2017
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... October 16, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... October 30, 2017
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .................................................................. November 13, 2017
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. November 20, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ..................................................................... December 4, 2017
`Oral argument (if requested)
`
`
`
`
`6
`
`
`
`IPR2016-01901
`Patent 8,450,249 B2
`
`
`
`
`FOR PETITIONER:
`
`Herbert Hart
`George Wheeler
`Aaron Barkoff
`Peter Lish
`McANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`gwheeler@mcandrews-ip.com
`abarkoff@mcandrews-ip.com
`plish@mcandrews-ip.com
`
`FOR PATENT OWNER:
`
`Doug McClellan
`Elizabeth Weiswasser
`Melissa Hotze
`WEIL, GOTSHAL & MANGES LLP
`doug.mcclellan@weil.com
`elizabeth.weiswasser@weil.com
`melissa.hotze@weil.com
`
`
`
`7
`
`
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