Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 8
`Entered: July 21, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SK HYNIX INC., SK HYNIX AMERICA INC., and
`SK HYNIX MEMORY SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`NETLIST, INC.,
`Patent Owner.
`
`Case IPR2017-00667 (Patent 7,532,537 B2)
`Case IPR2017-00668 (Patent 7,532,537 B2)
`Case IPR2017-00692 (Patent 8,874,831 B2)1
`
`
`Before STEPHEN C. SIU, MATTHEW R. CLEMENTS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`1 This Scheduling Order sets due dates that are identical in all three cases.
`We, therefore, exercise our discretion to issue one Scheduling Order to be
`filed in each case. The parties are not authorized to use this style heading
`for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`Paper No. 8
`Entered: July 21, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SK HYNIX INC., SK HYNIX AMERICA INC., and
`SK HYNIX MEMORY SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`NETLIST, INC.,
`Patent Owner.
`
`Case IPR2017-00667 (Patent 7,532,537 B2)
`Case IPR2017-00668 (Patent 7,532,537 B2)
`Case IPR2017-00692 (Patent 8,874,831 B2)1
`
`
`Before STEPHEN C. SIU, MATTHEW R. CLEMENTS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`1 This Scheduling Order sets due dates that are identical in all three cases.
`We, therefore, exercise our discretion to issue one Scheduling Order to be
`filed in each case. The parties are not authorized to use this style heading
`for any subsequent papers.
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 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 filed promptly. The parties may not stipulate to an extension of DUE
`DATES 6 and 7. Nor does stipulating to a different DUE DATE 4 modify
`the deadline, set in this Order, for requesting an oral argument.
`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.
`
`1. INITIAL CONFERENCE CALL
`The parties are directed to contact the Board within a month of this
`decision only if there is a need to discuss proposed changes to this
`Scheduling Order or proposed motions.
`
`2
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`2. 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 and fully
`briefed in the response will be deemed waived.
`
`3. 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.
`
`4. 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.
`
`5. 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
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`6. 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.
`
`7. DUE DATE 6
`Each party must file any reply to any opposition to a motion to
`exclude evidence by DUE DATE 6.
`
`8. 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 West Coast Regional
`Office, in San Jose, California. 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. 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
`
`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).
`
`4
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`
`Cross-examination ends no later than a week before the filing
`2.
`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
`should not exceed a single, short paragraph. The opposing party may
`respond to the observation. Any response must be equally concise and
`specific.
`
`D. MOTION 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.
`37 C.F.R. § 42.121(a). Patent Owner should contact the Board to request
`such a conference, if necessary, at least ten business days before DUE
`DATE 1.
`
`E. PROTECTIVE ORDER
`No protective order has been entered in this proceeding. The parties
`are reminded of the requirement for a protective order when filing a motion
`to seal. 37 C.F.R. § 42.54. If the parties have agreed to a proposed
`
`5
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`protective order, including the Standing Default Protective Order, 77 Fed.
`Reg. 48,756, App. B (Aug 14, 2012), they should file a signed copy of the
`proposed protective order with the motion to seal. If the parties choose to
`propose a protective order other than, or departing from, the default Standing
`Protective Order, they must submit a joint, proposed protective order,
`accompanied by a red-lined version based on the default protective order in
`Appendix B to the Board’s Office Patent Trial Practice Guide.
`
`E. PATENT OWNER RESPONSE AND PETITIONER’S REPLY
`Effective May 2, 2016, 37 C.F.R. § 42.24(c) was amended to provide
`that the patent owner response for an inter partes review is limited to 18,700
`words, and that Petitioner’s reply to the patent owner response is limited to
`5,600 words. See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1); Amendments to the
`Rules of Practice for Trials Before the Patent and Trial Appeal Board, Final
`Rule, 81 Fed. Reg. 18,750, 18,765 (April 1, 2016).
`
`F. FORMAT AND FILING OF DOCUMENTS
`The parties are reminded that 37 C.F.R. § 42.6 was amended effective
`May 19, 2015, and now requires the use of 14-point, Times New Roman
`proportional font, with normal spacing. The parties should familiarize
`themselves with the requirements of 37 C.F.R. § 42.6. Any filing that does
`not comply with 37 C.F.R. § 42.6 may be expunged.
`
`
`
`6
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .............................................. Upon Request
`
`DUE DATE 1 ....................................................................... October 24, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ January 24, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... February 26, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .......................................................................... March 19, 2018
`Motions for observations regarding cross-examination of reply
`witness
`Motions to exclude evidence
`Requests for oral argument2
`
`DUE DATE 5 .............................................................................. April 2, 2018
`Responses to motions for observations
`Oppositions to motions to exclude evidence
`
`
`2 Although the parties may stipulate to a different date for DUE DATE 4
`regarding the “Motion for observations regarding cross-examination of reply
`witness” and “Motions to exclude evidence,” the parties may not stipulate to
`a different date for the filing of “Requests for oral argument.”
`
`7
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`DUE DATE 6 .............................................................................. April 9, 2018
`Replies to oppositions to motions to exclude
`
`DUE DATE 7 ............................................................................ April 24, 2018
`Oral argument (if requested)
`
`
`8
`
`
`
`IPR2017-00667 (Patent 7,532,537 B2)
`IPR2017-00668 (Patent 7,532,537 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`For PETITIONER:
`
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`Sidley-SKH-IPR@sidley.com
`
`
`For PATENT OWNER:
`
`MORRISON & FOERESTER LLP (IPR2017-00667 & IPR2017-00668)
`Mehran Arjomand
`Jonathan Statman
`Erol Basol
`marjomand@mofo.com
`jstatman@mofo.com
`ebasol@mofo.com
`
`
`For PATENT OWNER:
`
`McANDREWS, HELD & MALLOY, LTD. (IPR2017-00692)
`
`Thomas J. Wimbiscus
`Christopher C. Winslade
`Gregory C. Schodde
`Scott P. McBride
`Ronald H. Spuhler
`Wayne H. Bradley
`twimbiscus@mcandrews-ip.com
`cwinslade@mcandrews-ip.com
`gschodde@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`rspuhler@mcandrews-ip.com
`wbradley@mcandrews-ip.com
`
`9
`
`
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