`
`Paper No. 8
`Filed: November 30, 2017,
`
`
`
`Trials@uspto.gov
`571-272-7822
`2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`ULTRATEC, INC.,
`Petitioner,
`
`v.
`
`SORENSON IP HOLDINGS,
`Patent Owner.
`
`——————
`Case IPR2017-01394
`Patent 9,336,689 B2
`——————
`
`Before SALLY C. MEDLEY, STACEY G. WHITE, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`IPR2017-01394
`Patent 9,336,689 B2
`
`I.
`
`GENERAL INSTRUCTIONS
`
`A.
`
`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. at 48,771 (Appendix B). If the parties choose to propose a
`protective order deviating from the default protective order, 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 strictly limited 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.
`
`B. 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
`
`
`
`2
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`IPR2017-01394
`Patent 9,336,689 B2
`
`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. In addition, on November 21, 2017, the Office provided guidance
`on motions to amend in view of Aqua Products, Inc. v. Matal, 872 F.3d 1290
`(Fed. Cir. 2017). See “Guidance on Motions to Amend in view of Aqua
`Products” (Nov. 21, 2017), https://www.uspto.gov/sites/default/files/documents/
`guidance_on_motions_to_amend_11_2017.pdf.
`
`
`C. 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.
`
`
`
`3
`
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`IPR2017-01394
`Patent 9,336,689 B2
`
`D. DEPOSITIONS
`
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (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.
`
`E.
`
`CROSS-EXAMINATION
`
`Except as the parties might otherwise agree, for each due date—
`a.
`Cross-examination begins after any supplemental evidence
`is due. 37 C.F.R. § 42.53(d)(2).
`b.
`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.
`
`F. 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. at 48,768.
`4
`
`
`
`
`
`
`IPR2017-01394
`Patent 9,336,689 B2
`
`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.
`
`II. 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.
`
`A. 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 in the response will
`be deemed waived.
`
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`5
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`IPR2017-01394
`Patent 9,336,689 B2
`
`B. 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.
`
`C. 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.
`
`D. DUE DATE 4
`
`Each party must file any motion for an observation on the cross-
`a.
`examination testimony of a reply witness (see section A.7, above) by DUE
`DATE 4.
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE
`DATE 4.
`
`E. DUE DATE 5
`
`Each party must file any reply to a petitioner observation on
`a.
`cross-examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 5.
`
`F.
`
`DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`
`G. DUE DATE 7
`
`The oral argument (if requested by either party) is set for DUE DATE 7.
`
`
`
`6
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`IPR2017-01394
`Patent 9,336,689 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ...................................................................... February 20, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2 ............................................................................. May 11, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ............................................................................. June 11, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`DUE DATE 4 ................................................................................ July 2, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 .............................................................................. July 16, 2018
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 .............................................................................. July 23, 2018
`Reply to opposition to motion to exclude
`DUE DATE 7 ........................................................................... August 6, 2018
`Oral argument (if requested)
`
`
`
`
`7
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`
`
`IPR2017-01394
`Patent 9,336,689 B2
`
`PETITIONER:
`
`Michael Jaskolski
`Louis A. Klapp
`Nikia L. Gray
`QUARLES & BRADY LLP
`michael.jaskolski@quarles.com
`louis.klapp@quarles.com
`nikia.gray@quarles.com
`
`
`PATENT OWNER:
`
`Ruben H. Munoz
`John Wittenzellner
`AKIN GUMP STRAUSS HAUER & FELD LLP
`rmunoz@akingump.com
`jwittenzellner@akingump.com
`
`
`
`8
`
`
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