`571-272-7822
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`Paper 7
`Entered: November 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`PROMOS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`Case IPR2017-01415
`Patent 6,208,574
`
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
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`
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`
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`
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`IPR2017-01415
`Patent 6,208,574
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`A. DUE DATES
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`This Order sets forth due dates for the parties to take action after
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`institution of the proceeding. The parties may stipulate to different dates for
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`DUE DATES 1 through 5 (earlier or later, but no later than DUE DATE 6).
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`The parties may not stipulate to an extension of DUE DATES 6 and 7, and
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`with respect to DUE DATE 4, may not stipulate to an extension of the date
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`set forth in this Order for requesting oral argument.
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`If the parties stipulate to different due dates, notice of the stipulation
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`specifically identifying the changed due dates must be promptly filed. In
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`stipulating to different times, the parties should consider the effect of the
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`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 B, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
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`(Aug. 14, 2012) (Appendix D), apply to this proceeding. The Board may
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`impose an appropriate sanction for failure to adhere to the Testimony
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`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`1. DUE DATE 1
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`The patent owner may file—
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`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`2
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`IPR2017-01415
`Patent 6,208,574
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`The patent owner must file any such response or motion to amend by DUE
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`DATE 1. If the patent owner elects not to file anything, the patent owner
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`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
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`response will be deemed waived.
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`2. 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. 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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`4. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below) by
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`DUE DATE 4.
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`b.
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`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. DUE DATE 5
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`a.
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`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.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`IPR2017-01415
`Patent 6,208,574
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`6. 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. DUE DATE 7
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`Oral argument (if requested by either party) is set for DUE DATE 7.
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`B. INITIAL CONFERENCE CALL
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`The parties are directed to contact the Board within one month of this
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`Order if there is a need to discuss proposed changes to this 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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`
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`C. PROTECTIVE ORDER
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`A protective order does not exist in this proceeding, and will not exist
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`until a party files a motion to seal that includes a proposed protective order,
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`and the proposed protective order is approved by the Board. See 37 C.F.R.
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`42.54(a). The motion to seal must include a certification that the moving
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`party has in good faith conferred or attempted to confer with other affected
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`parties in an effort to resolve any dispute. Id. A party filing confidential
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`information must use the appropriate availability indicator in PTAB E2E,
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`regardless of who owns the confidential information. The owner of the
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`confidential information, not necessarily the party filing the information,
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`must file the motion to seal and bears the burden of showing the information
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`for which protection is sought is confidential information.
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`IPR2017-01415
`Patent 6,208,574
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`We encourage the parties to adopt the Board’s default protective order
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`if they conclude that a protective order is necessary in this proceeding. See
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`Default Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. at
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`48,769–71, App. B. If the parties file a proposed protective order that
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`deviates from the default protective order, they must submit the proposed
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`protective order jointly, together with a marked-up copy showing the
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`differences between the default and proposed protective orders.
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`The Board has a strong interest in the public availability of
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`proceedings. We advise the parties that redactions to documents filed in this
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`proceeding should be limited to isolated passages consisting entirely of
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`confidential information, and that the thrust of the underlying argument or
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`evidence must be clearly discernible from redacted documents. We also
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`advise the parties that information subject to a protective order will become
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`public if identified in a final written decision in this proceeding, and that a
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`motion to expunge the information will not necessarily prevail over the
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`public interest in maintaining a complete and understandable file history.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
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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.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`IPR2017-01415
`Patent 6,208,574
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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 Office Patent Trial Practice Guide, 77
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`Fed. Reg. at 48,756. The observation must be a concise statement of the
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`relevance of precisely identified testimony to a precisely identified argument
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`or portion of an exhibit. Each observation should not exceed a single, short
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`paragraph. The opposing party may respond to the observation. Any
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`response must be equally concise and specific.
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`
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`F. MOTION TO AMEND
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`Although the filing of a Motion to Amend is authorized under our
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`Rules, the patent owner must confer with the Board before filing any Motion
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`to Amend. See 37 C.F.R. § 42.121(a). A conference call to satisfy the
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`requirement of 37 C.F.R. § 42.121(a) must be scheduled no less than ten
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`(10) business days prior to DUE DATE 1.
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`IPR2017-01415
`Patent 6,208,574
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL .............................................. Upon Request
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`DUE DATE 1 ...................................................................... February 12, 2018
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 ............................................................................... May 4, 2018
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ............................................................................... June 4, 2018
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ............................................................................. June 25, 2018
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ................................................................................ July 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 .............................................................................. July 16, 2018
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`Reply to opposition to motion to exclude
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`DUE DATE 7 .............................................................................. July 30, 2018
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`Oral argument (if requested)
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`7
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`IPR2017-01415
`Patent 6,208,574
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`For PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Chetan R. Bansal
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`arvindjairam@paulhastings.com
`
`For PATENT OWNER:
`
`Craig Kaufman
`Kevin Jones
`TECHKNOWLEDGE LAW GROUP LLP
`ckaufman@tklg-llp.com
`kjones@tklg-llp.com
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