`571.272.7822
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`Paper 12
`Entered: July 31, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`INFOBIONIC, INC.,
`Petitioner,
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`v.
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`BRAEMAR MANUFACTURING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00796
`Patent RE43,767 E
`____________
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`
`
`Before PHILLIP J. KAUFFMAN, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
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`WOODS, Administrative Patent Judge.
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`SCHEDULING ORDER
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`This Order sets a schedule for trial, including due dates for the parties
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`to take action upon institution of the trial. See Appendix. The trial will be
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`administered in a just, speedy and inexpensive manner such that pendency
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`before the Board is no more than one year after institution. 37 C.F.R.
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`§§ 42.1(b) and 42.100(c).
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`IPR2017-00796
`Patent RE43,767 E
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`A. INITIAL CONFERENCE
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`An initial conference call has not been scheduled at this time. The
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`parties are directed to contact the Board within a month of this decision if
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`there is a need to discuss proposed changes to this Scheduling Order or
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`proposed motions. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the initial
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`conference call).
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`B. MEET AND CONFER REQUIREMENT
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`The parties are encouraged to engage in meaningful discussions
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`before seeking authorization under 37 C.F.R. § 42.20(b) to file a request for
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`relief with the Board. At a minimum, before requesting authorization, the
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`parties shall confer with each other in a good-faith effort to resolve the issue
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`for which relief is to be sought. Only if the parties cannot resolve the issue
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`on their own may a party request a conference call with the Board in order to
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`seek authorization to move for relief. In any request for a conference call
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`with the Board, the requesting party shall: (1) certify that it has in good-
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`faith conferred (or attempted to confer) with the other parties in an effort to
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`resolve the issue; (2) identify with specificity the issue for which agreement
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`has not been reached; (3) state the precise relief to be sought; and
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`(4) propose specific dates and times at which both parties are available for
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`the conference call.
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`C. DUE DATES
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`The Appendix specifies due dates for the parties to take action in this
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`trial proceeding. The parties may stipulate to different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`2
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`IPR2017-00796
`Patent RE43,767 E
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`notice of any stipulation, specifically identifying the changed due dates,
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`must be filed promptly with the Board. The parties may not stipulate to an
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`extension of DUE DATES 6 and 7.
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`In stipulating to different dates, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see section D, below).
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`1.
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`DUE DATE 1
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`The patent owner may file—
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`a. A response to the petition (37 C.F.R. § 42.120), and
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`b. A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by
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`DUE DATE 1. If the patent owner elects not to file anything, the patent
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`owner must arrange a conference call with the parties and the Board. The
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`patent owner is cautioned that any arguments for patentability not raised and
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`fully briefed in the response will be deemed waived.
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`2.
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`DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3.
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`DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`3
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`IPR2017-00796
`Patent RE43,767 E
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`4.
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`DUE DATE 4
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`a. Each party must file any motion for an observation on the cross-
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`examination testimony of a reply witness (see section E, below) by DUE
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`DATE 4.
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`b. Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
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`DUE DATE 4.
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`5.
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`DUE DATE 5
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`a. Each party must file any response to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`6.
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`DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`7.
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`DUE DATE 7
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`Oral argument (if requested by either party) is set for DUE DATE 7.
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`D. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1. Cross-examination begins after any supplemental evidence is due.
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`37 C.F.R. § 42.53(d)(2).
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`2. Cross-examination ends no later than a week before the filing date
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`for any paper in which the cross-examination testimony is expected to be
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`used. Id.
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`4
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`IPR2017-00796
`Patent RE43,767 E
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`The parties are reminded that the Testimony Guidelines appended to
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`the Trial Practice Guide, 77 Fed. Reg. at 48,772 (App. D), apply to this
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`proceeding. Pursuant to 37 C.F.R. § 42.12, the Board may impose an
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`appropriate sanction on any party who fails to adhere to the Testimony
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`Guidelines, including reasonable expenses and attorney fees incurred by a
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`party affected by another party’s misconduct.
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`E. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness, because no further substantive
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`paper is permitted after the reply. See Trial Practice Guide, 77 Fed. Reg. at
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`48,768. The observation must be a concise statement of the relevance of
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`precisely identified testimony to a precisely identified argument or portion
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`of an exhibit. Each observation should not exceed a single, short paragraph.
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`The opposing party may respond to the observation. Any response must be
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`equally concise and specific.
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`5
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`IPR2017-00796
`Patent RE43,767 E
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`APPENDIX
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`DUE DATE 1………………………………………...…… October 31, 2017
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`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
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`DUE DATE 2…………………………………………….... January 31, 2018
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`Petitioner’s reply to patent owner’s response to the petition
`Petitioner’s opposition to motion to amend
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`DUE DATE 3………………………………………..……..… March 5, 2018
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4……………………………………….………. March 26, 2018
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`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
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`DUE DATE 5……………………………….....………………. April 9, 2018
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6…………………………………….….……….. April 16, 2018
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`Reply to opposition to motion to exclude
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`DUE DATE 7…………………………………….…………..… May 1, 2018
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`Oral argument
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`6
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`IPR2017-00796
`Patent RE43,767 E
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`PETITIONER:
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`Charles Sanders
`Charles.sanders@lw.com
`
`Jonathan Strang
`Jonathan.strang@lw.com
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`Kristopher Davis
`Kris.davis@lw.com
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`
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`PATENT OWNER:
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`Ching-Lee Fukuda
`clfukuda@sidley.com
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`Bradford Badke
`jbadke@sidley.com
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`Thomas Broughan
`tbroughan@sidley.com
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`7
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