`571-272-7822
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`Paper 10
`Entered: September 5, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PLASTIC DEVELOPMENT GROUP, LLC,
`Petitioner,
`
`v.
`
`MAXCHIEF INVESTMENTS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00846
`Patent 6,622,644 B2
`____________
`
`Before SCOTT A. DANIELS, TIMOTHY J. GOODSON, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
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`IPR2017-00846
`Patent 6,622,644 B2
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`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). 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 25 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,
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`they must submit the proposed protective order jointly 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. Compliance with Word Count/Page Limit and Type Face
`The parties shall comply with 37 C.F.R. § 42.24 and be familiar with
`Board interpretations of the requirements of that regulation. For example,
`“[e]xcessive wording in figures, drawings or images, deleting spacing
`between words, or using excessive acronyms or abbreviations for word
`phrases, in order to bypass the rules on word count, are not reasonable.”
`IPR2016-01535, Paper 8, 7 (Dec. 1, 2016). The excessive deletion of spaces
`in citations may be deemed inappropriate – the parties are to make
`reasonable efforts to comply with accepted citation formats. See, e.g.,
`IPR2017–00433, Paper 15 (June 22, 2017), see also The Blue Book: A
`Uniform System of Citation R. 3.3, 5.1, at 75–76, 82–83 (Columbia Law
`Review Ass’n et al. eds., 20th ed. 2015); Pi-Net Int’l, Inc. v. JPMorgan
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`Chase & Co., 600 F. App’x 774, 775 (Fed. Cir. 2015) (determining deletion
`of required spacing circumvents rule on word count).
`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 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.
`5. 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 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.
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`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.
`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—
`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.
`8. 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,
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`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.
`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
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`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.8, above) 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.
`5. DUE DATE 5
`a.
`Each party must file any reply to a petitioner 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.
`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.
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`The panel is available to hear oral argument, if requested, at the
`USPTO main office in Alexandria, Virginia, or at the Silicon Valley
`Regional Office in San Jose, California. Oral argument will be scheduled in
`Alexandria, Virginia, unless the parties indicate otherwise. If the parties
`desire oral argument in San Jose, California, the parties are directed to state
`that preference as soon as possible, but in no event later than in the parties’
`requests for oral argument. The Board will set and identify the location in
`the order setting oral argument. Although the panel shall consider the
`parties’ hearing location preference, the Board may not be able to honor the
`parties’ preference due, for example, to the availability of hearing room
`resources.
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`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................. November 29, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... February 21, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... March 21, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ April 11, 2018
`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 25, 2018
`Response to observation
`Opposition to motion to exclude
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`DUE DATE 6 ............................................................................... May 5, 2018
`Reply to opposition to motion to exclude
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`DUE DATE 7 ............................................................................. May 22, 2018
`Oral argument (if requested)
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`IPR2017-00846
`Patent 6,622,644 B2
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`For PETITIONER:
`
`Michael N. MacCallum
`Mark A. Jotanovic
`John S. LeRoy
`BROOKS KUSHMAN, P.C.
`mmaccallum@brookskushman.com
`mjotanovic@brookskushman.com
`jleroy@brookskushman.com
`
`For PATENT OWNER:
`
`Mark P. Crockett
`Michael J. Bradford
`LUEDEKA NEELY GROUP, P.C.
`mcrockett@Luedeka.com
`mbradford@Luedeka.com
`
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