Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: July 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00685 (US 9,203,870 B2)
`Case IPR2017-00687 (US 9,215,310 B2)
`_______________
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: July 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00685 (US 9,203,870 B2)
`Case IPR2017-00687 (US 9,215,310 B2)
`_______________
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`A. GENERAL INSTRUCTIONS
`1. Requests 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 DATE 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.
`d. The request may include a brief background discussion of the
`issue(s) and/or motion(s) to be discussed, but must not include
`
`2
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`arguments. The requests are made for administrative purposes
`in scheduling the call only; they are not arguments made before
`the panel and will not become a part of the record.
`e. The request must certify that the parties conferred in
`accordance with section A.2.a. of this Order, 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.
`g. One or both parties may, at their option, hire a court reporter to
`transcribe the conference call. The panel will provide
`instructions during the call for how to file the transcript into the
`record.
`3. 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 along with a redline
`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.
`
`3
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`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 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. Motions to Seal
`A party intending a document or thing to be sealed shall file a motion
`to seal concurrent with the filing of the document or thing to be sealed.
`37 C.F.R. § 42.14. The moving party must also file the following as exhibits
`accompanying the motion:
`(a) A declaration establishing that the document or thing sought to be
`filed under seal is sealable.
`(b) If seeking to file a portion of a document under seal, a redacted
`version of the document must be filed publicly.
`(c) An unredacted version of the document must be filed
`confidentially (i.e., as available to the “Parties and Board Only”).
`The unredacted version must highlight or otherwise clearly
`indicate the portion(s) of the document that have been redacted in
`the redacted version.
`If the moving party is seeking to file under seal a document
`designated confidential by the opposing party pursuant to a protective order,
`the declaration in support of the motion to seal must identify the party that
`
`4
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`has designated the material as confidential (“the designating party”). Within
`five business days, the designating party must file a response to the motion
`to seal and file a declaration as an exhibit that establishes the designated
`information is sealable.
`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. See 37 C.F.R. § 42.121(a). Patent Owner should
`arrange for a conference call with the panel and opposing counsel at least two
`weeks before DUE DATE 1 to satisfy the 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: https://www.uspto.gov/patents-application-process/appealing-
`patent-decisions/decisions-and-opinions/representative-orders.
`5. Discovery Disputes
`The panel encourages the 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 attempts to resolve the dispute fail, a
`party may request a conference call with the Board in accordance with
`section A.2 of this Order to seek authorization to file a motion for relief.
`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.
`
`5
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`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.
`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. Motion for Observations on Cross-Examination
`A motion for observations 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 typically 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.
`
`6
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`The parties may file one motion for observations per witness that is
`proffered with the reply.
`
`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
`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.
`
`7
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`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.8, above) by DUE DATE 4.
`b. Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) by DUE DATE 4.
`c. Each party must file any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 4. In its request, the parties may
`state a preference for the location of the oral argument at either
`the USPTO’s Headquarters in Alexandria, Virginia, or the
`Silicon Valley Office in San Jose, California.
`5. DUE DATE 5
`a. Each party must file any response to a party’s observations 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 to an opposition to a motion to exclude
`evidence by DUE DATE 6.
`
`8
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`9
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`DUE DATE APPENDIX
`
`DUE DATE 1 ....................................................................... October 13, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ January 15, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... February 13, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ March 6, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .......................................................................... March 20, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................................... March 27, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ April 10, 2018
`Oral argument (if requested)
`
`
`
`
`10
`
`
`
`IPR2017-00685 (US 9,203,870 B2)
`IPR2017-00687 (US 9,215,310 B2)
`
`
`
`
`
`
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`zpatdcdocketing@cooley.com
`
`PATENT OWNER:
`
`Ryan M. Schultz
`Andrew J. Kabat
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`akabat@robinskaplan.com
`
`
`11
`
`
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