Trials@uspto.gov
`571.272.7822
`
`
`Paper 16
`Entered: October 24, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WARGAMING GROUP LIMITED,
`Petitioner,
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01082
`Patent 7,682,243 B2
`____________
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct and Schedule of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571.272.7822
`
`
`Paper 16
`Entered: October 24, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WARGAMING GROUP LIMITED,
`Petitioner,
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01082
`Patent 7,682,243 B2
`____________
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct and Schedule of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-01082
`Patent 7,682,243 B2
`
`
`I.
`BACKGROUND
`On March 13, 2017, Wargaming Group Limited (“Petitioner”) filed a
`Petition requesting inter partes review of claims 1–7 of U.S. Patent No.
`7,682,243 B2 (“the ’243 patent”). Paper 1. In its Preliminary Response,
`Game and Technology Co., Ltd. (“Patent Owner”) argued that the Petition is
`time barred under 35 U.S.C. § 315(b) because Wargaming.net LLP, a real
`party-in-interest to Petitioner, “was served with a complaint alleging
`infringement of the ‘243 patent on December 14, 2015, in accordance with
`the laws of England and Wales” pursuant to the Hague Convention. Prelim.
`Resp. 4. After having a call with the parties on August 11, 2017, the Board
`authorized Petitioner to file a reply limited to addressing Patent Owner’s
`assertion that Wargaming.net LLP was so served. See Paper 11. In its reply,
`Petitioner denied that such service occurred and submitted a declaration of
`Mr. Costas A. Joannou (Ex. 1017), the individual upon whom Patent Owner
`alleges service of the complaint was made. Paper 12, 1.
`In our Decision on Institution, we stated:
`The current record presents competing evidence as to
`whether Wargaming.net LLP was served more than one year
`before the filing of the Petition. We determine that this record
`needs to be developed further before a determination can be
`made as to this issue. Thus, on this record, we do not deny
`institution of the Petition as time barred under 35 U.S.C.
`§ 315(b). We reserve our determination on this issue pending
`further development of the record during trial.
`Paper 14, 7.
`
`
`II. DISCUSSION
`On October 13, 2017, following institution of the trial, we had a
`conference call with the parties to discuss discovery that the parties need
`with respect to the issue of whether Wargaming.net LLP was served with a
`
`2
`
`
`
`IPR2017-01082
`Patent 7,682,243 B2
`
`complaint alleging infringement of the ’243 patent more than one year
`before the filing of the Petition and the timing of that discovery. Mr. Harper
`Batts appeared for Petitioner, and Mr. William Mandir appeared for Patent
`Owner. On the call, we advised the parties that we want discovery and
`briefing on the service issue to take place early in the trial as it could be
`case-dispositive. Mr. Batts stated that the parties conferred and agreed to
`narrowly-tailored discovery to address the service issue. Mr. Batts also
`stated the parties agreed that, if either party relies on documents, the party
`may rely on an affidavit to authenticate any such documents. We also
`discussed the deposition of Mr. Talbot, upon whose Witness Statement of
`Service (Ex. 2002) Patent Owner relies. See Prelim. Resp. 4. During the
`call, Mr. Mandir stated that he had been in touch with Mr. Talbot regarding a
`possible deposition, and he agreed that allowing Petitioner to depose Mr.
`Talbot would be in the interests of justice (see 37 C.F.R. § 42.51(b)(2)(i)).
`During the call, Mr. Batts expressed concern that Patent Owner could
`potentially introduce a new declaration from Mr. Talbot after the deposition.
`Mr. Batts requested that any additional declaration be produced in advance
`of the deposition so that multiple depositions could be avoided. We advised
`Patent Owner that any declaration testimony must be produced before the
`deposition. During the call, we also advised the parties that any documents a
`party intends to use at a deposition must be produced in advance of the
`deposition.
`We asked the parties to contact their respective witnesses to inquire as
`to potential dates for depositions, and we asked that the parties meet and
`confer and advise the Board when the depositions will occur. On October
`18, 2017, counsel for Patent Owner, on behalf of the parties, advised the
`
`3
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`
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`IPR2017-01082
`Patent 7,682,243 B2
`
`Board via email that the parties agreed to conduct depositions of both Mr.
`Joannou and Mr. Talbot in London on November 2, 2017. Ex. 3001. Patent
`Owner’s email further stated:
`The parties have also agreed to send any exhibit or
`document to be used on examination of their own witness that is
`not already of record to the other party at least 4 days before the
`deposition. If any further declarations will be provided by either
`deponent, those declarations will be sent to the other party by no
`later than 5 p.m. Eastern on October 26th.
`
`Id.
`
`III. ORDER SETTING DEADLINES
`WITH RESPECT TO SERVICE ISSUE
`
`In view of the foregoing, it is
`ORDERED that discovery with respect the issue of whether
`Wargaming.net LLP was served with a complaint alleging infringement of
`the ’243 patent more than one year before the filing of the Petition shall
`proceed in the manner outlined above and as agreed by the parties;
`FURTHER ORDERED that Petitioner may file by November 17,
`2017, a brief not to exceed ten (10) pages addressing the issue of whether
`Wargaming.net LLP was served with a complaint alleging infringement of
`the ’243 patent more than one year before the filing of the Petition;
`FURTHER ORDERED that Patent Owner may file by December 1,
`2017, an opposition to Petitioner’s brief not to exceed ten (10) pages; and
`FURTHER ORDERED that Petitioner may file by December 8, 2017,
`a reply to Patent Owner’s opposition not to exceed three (3) pages.
`
`4
`
`
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`IPR2017-01082
`Patent 7,682,243 B2
`
`
`IV. ORDER SETTING REMAINING DEADLINES1
`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 This portion of the order does not apply to discovery and briefing
`pertaining to the issue of whether Wargaming.net LLP was served with a
`complaint alleging infringement of the ’243 patent more than one year
`before the filing of the Petition.
`
`
`5
`
`
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`IPR2017-01082
`Patent 7,682,243 B2
`
`
`1.
`DUE DATE 1
`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).
`Patent Owner must file any such response or motion to amend in each
`proceeding by DUE DATE 1. If Patent Owner elects not to file anything in
`either proceeding, Patent Owner must arrange a conference call with the
`parties and the Board. Patent Owner is cautioned that any arguments for
`patentability not raised in the response to the particular proceeding will be
`deemed waived.
`
`2.
`DUE DATE 2
`Petitioner must file any reply to Patent Owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`
`3.
`DUE DATE 32
`Patent Owner must file any reply to 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 C, below)
`by DUE DATE 4.
`
`
`2 Please be advised that, if no Motion to Amend is filed, Due Date 3 is moot,
`and the panel may advance Due Dates 4–7 sua sponte.
`
`
`6
`
`
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`IPR2017-01082
`Patent 7,682,243 B2
`
`
`Each party must file any motion to exclude evidence (37
`b.
`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 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.
`
`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 and will take place at the Texas Regional Office of the USPTO,
`207 South Houston St., Suite 159, Dallas, Texas 75202.
`
`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.
`
`7
`
`
`
`IPR2017-01082
`Patent 7,682,243 B2
`
`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.
`
`8
`
`
`
`IPR2017-01082
`Patent 7,682,243 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ....................................................................... January 29, 2018
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................... April 17, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................ May 17, 2018
`Patent Owner’s reply to Petitioner’s opposition to motion to amend
`
`DUE DATE 4 .............................................................................. June 7, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ............................................................................ June 21, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ June 28, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................. July 11, 2018
`Oral argument (if requested)
`
`
`
`
`
`
`9
`
`
`
`IPR2017-01082
`Patent 7,682,243 B2
`
`PETITIONER:
`Harper Batts
`Jeffrey Liang
`BAKER BOTTS L.L.P.
`harper.batts@bakerbotts.com
`jeffrey.liang@bakerbotts.com
`
`PATENT OWNER:
`William Mandir
`Peter Park
`John Bird
`Christopher Bezak
`Fadi Kiblawi
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`pspark@sughrue.com
`jbird@sughrue.com
`cbezak@sughrue.com
`fkiblawi@sughrue.com
`
`
`
`
`
`10
`
`
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