Trials@uspto.gov
`571-272-7822
`
`Paper 36
`Entered: June 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC
`Patent Owner.
`____________
`
`Case IPR2017-00851
`Patent 8,440,369 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`EXTENDED SCHEDULING ORDER
`
`
`571-272-7822
`
`Paper 36
`Entered: June 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC
`Patent Owner.
`____________
`
`Case IPR2017-00851
`Patent 8,440,369 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`EXTENDED SCHEDULING ORDER
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`On April 27, 2018, we modified our institution decision to include
`review of “all challenged claims and all of the grounds presented in the
`Petition.” Paper 28, 2. As a result of this modification, five grounds (a
`number of which include numerous obviousness combinations) were added
`to this inter partes review. See Paper 33 (“J. Br.”), 1–3 (identifying the
`grounds asserted in the Petition, the grounds originally instituted, and the
`newly-instituted grounds).
`On May 21, 2018, with Board authorization (Paper 32), the parties
`filed a Joint Brief in Support of Good Cause to Extend the Schedule along
`with a joint proposed schedule of supplemental briefing to address the
`newly-instituted grounds. J. Br., Ex. A. Having found that good cause
`exists to do so, the Chief Administrative Patent Judge extended the one-year
`period for issuing a Final Written Decision in this proceeding for up to six
`months from the current August 25, 2018 deadline. Papers 34, 35.
`The Appendix to this Extended Scheduling Order sets due dates for
`the parties to take action with respect to the newly-instituted grounds in this
`proceeding. See Paper 28, 2; Paper 7, 8, 36–37. In setting these due dates,
`we considered the parties’ jointly proposed schedule, as well as the parties’
`requests regarding the page length of the requested supplemental briefing.
`J. Br. 6–7, Ex. A. The due dates set forth in this Order cannot be changed
`without prior authorization from the Board.
`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
`
`
`
`
`2
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`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 8
`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 8,
`limited to 25 pages. 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.
`
`2. DUE DATE 9
`The petitioner must file any supplemental reply to the patent owner’s
`supplemental response by DUE DATE 9, limited to 12 pages.
`
`3. DUE DATE 10
`a.
`Each party must file any observations on the cross-examination
`testimony of a supplemental reply witness (see section C, below) by DUE
`DATE 10.
`Each party must file any motion to exclude evidence in
`b.
`connection with the previously non-instituted grounds (37 C.F.R § 42.64(c))
`and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE DATE 10.
`
`4. DUE DATE 11
`a.
`Each party must file any response to an observation on cross-
`examination testimony of a supplemental reply witness by DUE DATE 11.
`
`3
`
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`Each party must file any opposition to a motion to exclude
`b.
`evidence in connection with the previously non-instituted grounds by DUE
`DATE 11.
`
`5. DUE DATE 12
`Each party must file any reply for a motion to exclude evidence in
`connection with the previously non-instituted grounds by DUE DATE 12.
`
`6. DUE DATE 13
`The oral argument (if requested by either party) is set for DUE
`DATE 13.
`
`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
`
`
`
`
`4
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`exceed a single, short paragraph. The opposing party may respond to the
`observation. Any response must be equally concise and specific.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`DUE DATE APPENDIX
`DUE DATE 8 .............................................................................. July 27, 2018
`Patent owner’s supplemental response to the petition, limited to the
`merits of the newly-instituted grounds
`
`DUE DATE 9 ................................................................... September 28, 2018
`Petitioner’s supplemental reply to patent owner’s supplemental
`response to petition
`
`DUE DATE 10 ..................................................................... October 26, 2018
`Observations regarding cross-examination of supplemental reply
`witness
`Motion to exclude evidence in connection with the previously non-
`instituted grounds
`Request for oral argument
`
`DUE DATE 11 ................................................................... November 2, 2018
`Response to observations regarding cross-examination of
`supplemental reply witness
`Opposition to motion to exclude evidence in connection with the
`previously non-instituted grounds
`
`DUE DATE 12 .................................................................... November 9, 2018
`Reply to opposition to motion to exclude evidence in connection with
`the previously non-instituted grounds
`
`DUE DATE 13 ................................................................ November 19, 2018
`Oral argument (if requested)
`
`
`
`
`
`
`
`6
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`PETITIONER:
`
`S. Richard Carden
`James V. Suggs
`McDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`carden@mbhb.com
`suggs@mbhb.com
`
`
`
`PATENT OWNER:
`
`Jennifer Hayes
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`
`
`
`
`
`
`
`
`
`7
`
`
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