Paper 7
`
`Trials@uspto.gov
`571-272-7822 Entered: April 25, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: April 25, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00178
`Patent 9,179,019 B2
`____________
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`Unless a party 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). In lieu of such a call, we instruct the parties as
`follows:
`(1) If a party wishes to request an initial conference call, that party shall
`request the call no later than 21 days after the institution of trial;
`(2) A request for a conference call shall include: (a) a list of proposed
`motions, if any, to be discussed during the call and (b) a list of dates and
`times when the parties are available for the call; and
`(3) The parties shall be prepared to discuss during the initial conference call
`their concerns, if any, relating to the schedule in this proceeding as set
`forth below.
`Absent good cause shown, we will not conduct an initial conference call later than
`30 days after the institution of a trial.
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties file
`one and the Board 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
`(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
`
`2
`
`
`
`
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`
`along with a marked-up comparison of the proposed and default protective orders
`showing the differences.
`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 strictly 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 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.
`3. Motions to Amend
`Although the filing of a Motion to Amend is authorized under our Rules,
`Patent Owner must confer with us before filing any Motion to Amend. See
`37 C.F.R. § 42.121(a). Patent Owner should arrange for a conference call with the
`panel and opposing counsel at least one week 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 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
`shall meet and confer to resolve such a dispute before contacting the Board. If
`
`3
`
`
`
`
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`
`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 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 specific 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. 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.
`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
`
`
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`
`
`
`
`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.
`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. 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 should not exceed a single, short paragraph. The opposing party
`may respond to the 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 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.
`Regardless of whether the parties stipulate to a change of DUE DATE 4,
`requests for oral argument must be filed no later than the date set forth in this order
`for DUE DATE 4, for Board planning purposes.
`
`5
`
`
`
`
`
`
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`
`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 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.
`5. DUE DATE 5
`a.
`Each party must file any reply to a petitioner observation on cross-
`examination testimony by DUE DATE 5.
`
`6
`
`
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`
`
`
`
`Each party must file any opposition to a motion to exclude evidence
`b.
`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.
`The panel is available to hear oral argument, if requested, at the USPTO
`main office in Alexandria, Virginia or the Rocky Mountain Regional Office in
`Denver, Colorado. If the parties have a preference with regard to the above-
`identified locations, the parties are directed each to state the preference in the
`party’s request for oral argument, including whether the parties agree to a stated
`preference. The Board will set and identify the location in the order setting oral
`argument. Note that the Board may not always be able to honor the parties’
`preference of hearing location due to the availability of hearing room resources and
`the panel’s needs.
`
`
`7
`
`
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`
`
`DUE DATE APPENDIX
`
`
`
`DUE DATE 1 ........................................................................... August 1, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... November 1, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... December 1, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................... December 22, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................ January 12, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................ January 19, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................ February 7, 2018
`Oral argument (if requested)
`
`8
`
`
`
`
`
`
`
`
`
`9
`
`IPR2017-00178
`Patent 9,179,019 B2
`
`For PETITIONER:
`
`Jason A. Engel
`Robert J. Barz K&L
`GATES LLP
`jason.engel@klgates.com
`robert.barz@klgates.com
`
`
`
`For PATENT OWNER:
`
`Johanna M. Wilbert
`Joel A. Austin
`Michael T. Piery
`QUARLES & BRADY LLP
`johanna.wilbert@quarles.com
`joel.austin@quarles.com
`michael.piery@quarles.com
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
