Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Entered: May 30, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00618
`Patent 7,355,805 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`MODIFIED SCHEDULING ORDER
`
`
`571-272-7822
`
`Paper 16
`Entered: May 30, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00618
`Patent 7,355,805 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`MODIFIED SCHEDULING ORDER
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`
`Challenged Claims
`Basis
`§ 102(e) 1–3, 10
`
`§ 103(a) 1–3, 10
`
`§ 103(a) 1–3, 10
`
`On January 6, 2017, Sony Corporation (“Petitioner”) filed a Petition
`(“Pet.,” Paper 2) to institute an inter partes review of claims 1–3 and 10 of
`U.S. Patent No. 7,355,805 B2 (“the ’805 patent,” Ex. 1001) with respect to
`the following grounds:
`Reference(s)
`Hennecken
`Hennecken and Albrecht II,
`Basis 1
`Hennecken and Albrecht II,
`Basis 2
`Hennecken, Albrecht II, and
`Dugas, Basis 1
`Hennecken, Albrecht II, and
`Dugas, Basis 2
`Albrecht II and Hennecken
`
`§ 103(a) 1–3, 10
`
`§ 103(a) 1–3, 10
`
`§ 103(a) 1–3, 10
`
`Pet. 4. On July 24, 2017, we denied the Petition and did not institute an
`inter partes review of the ’805 patent. Paper 9. In response to Petitioner’s
`Request for Rehearing (Paper 10), on December 18, 2017 we instituted inter
`partes review on the following grounds:
`Challenged Claims
`Reference(s)
`Basis
`Hennecken
`§ 102(e) 1–3, 10
`Hennecken and Albrecht II,
`Basis 1
`Hennecken, Albrecht II, and
`Dugas, Basis 1
`Paper 11, 11. On April 27, 2018, we modified our institution decision to
`include review of “all of the grounds presented in the Petition.” Paper 15, 2.
`On May 15, 2018, a conference call was held between respective
`counsel for the parties and Judges Kokoski, Abraham, and Ankenbrand,
`
`§ 103(a) 1–3, 10
`
`§ 103(a) 1–3, 10
`
`
`
`
`2
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`during which the parties were directed to meet and confer, and then jointly
`propose a schedule regarding supplemental briefing to address the newly-
`instituted grounds. On May 23, 2018, the parties submitted their proposed
`schedule to the Board via email.
`Upon consideration of the parties’ proposed schedule, we modify the
`schedule in this proceeding as set forth in the Appendix to this Modified
`Scheduling Order. The due dates set forth in this Order cannot be changed
`without prior authorization from the Board. We note that this proceeding is
`in a relatively early stage (Patent Owner submitted its Patent Owner
`Response on March 27, 2018), the newly-instituted grounds include the
`same prior art and claims as the originally-instituted grounds, and there is no
`Motion to Amend pending.
`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 attorney’s fees
`incurred by any party may be levied on a person who impeded, delays, or
`frustrates the fair examination of a witness.
`A. DUE DATES
`
`1. DUE DATE 1A
`The patent owner may file—
`A supplemental response to the petition (37 C.F.R. § 42.120), limited
`to the merits of the previously non-instituted grounds.
`The patent owner must file any such response by DUE DATE 1A,
`limited to 15 pages. If the patent owner elects not to file anything, the patent
`
`
`
`
`3
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`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 patent owner’s response and
`supplemental response by DUE DATE 2.
`
`3. DUE DATE 3
`a.
`Each party must file any observations on the cross-examination
`testimony of a reply witness (see section C, below) by DUE DATE 3.
`b.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) by DUE DATE 3.
`c.
`Each party must file any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 3.
`
`4. DUE DATE 4
`a.
`Each party must file any response to an observation on cross-
`examination testimony by DUE DATE 4.
`b.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 4.
`
`5. DUE DATE 5
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 5.
`
`6. DUE DATE 6
`The oral argument (if requested by either party) is set for DUE
`DATE 6.
`
`
`
`4
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`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. OBSERVATIONS ON CROSS-EXAMINATION
`Observations on cross-examination provide 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. at 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.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`DUE DATE APPENDIX
`DUE DATE 1A .......................................................................... June 20, 2018
`Patent owner’s supplemental response to the petition, limited to the
`merits of the newly-instituted grounds
`
`DUE DATE 2 ........................................................................... August 6, 2018
`Petitioner’s reply to patent owner’s response and supplemental
`response to petition
`
`DUE DATE 3 ......................................................................... August 31, 2018
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 4 ..................................................................... September 7, 2018
`Response to observations
`Opposition to motion to exclude evidence
`
`DUE DATE 5 .................................................................... September 14, 2018
`Reply to opposition to motion to exclude evidence
`
`DUE DATE 6 .................................................................. September 25, 2018
`Oral argument (if requested)
`
`
`
`
`
`
`
`6
`
`
`
`IPR2017-00618
`Patent 7,355,805 B2
`
`PETITIONER:
`
`Richard F. Giunta
`Randy J. Pritzker
`Marc S. Johannes
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`MJohannes-PTAB@wolfgreenfield.com
`
`
`
`PATENT OWNER:
`
`Eliot D. Williams
`Robert C. Scheinfeld
`Neil P. Sirota
`Eric J. Faragi
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`robert.scheinfeld@bakerbotts.com
`neil.sirota@bakerbotts.com
`eric.faragi@bakerbotts.com
`
`
`
`
`
`
`
`
`7
`
`
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
