Paper 8
`
`
`Trials@uspto.gov
`571-272-7822
` Entered: December 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01437
`Patent 7,916,845 B2
`____________
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
` Entered: December 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01437
`Patent 7,916,845 B2
`____________
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`
`IPR2017-01437
`Patent 7,916,845 B2
`
`
`A. GENERAL INSTRUCTIONS
`
`1. Initial Conference Call
`The parties are directed to contact the Board within a month of this
`decision if there is a need to discuss proposed changes to this Scheduling
`Order or proposed motions. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the
`initial conference call). To request a conference call, the requesting party
`should submit a list of dates and times when both parties are available for a
`call.
`
`2. Conference Calls with the Board
`In any request for a conference call with the Board to resolve a
`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. A request for a conference call,
`however, must not include arguments made by either party. Prior to
`contacting the Board, however, we encourage the parties to resolve any
`disputes arising in the proceeding on their own and in accordance with the
`precepts set forth in 37 C.F.R. § 42.1(b).
`
`3. Confidential Information
`The parties must file confidential information using the appropriate
`availability indicator in PTAB E2E (e.g., “Board and Parties Only”),
`regardless of whose confidential information it is. It is the responsibility of
`the party whose confidential information is at issue, not necessarily the
`
`2
`
`
`
`IPR2017-01437
`Patent 7,916,845 B2
`
`proffering party, to file the motion to seal, unless the party whose
`confidential information is at issue is not a party to this proceeding.
`A protective order does not exist in a case until one is filed in the case
`and is approved by the Board. If a motion to seal is filed by either party, the
`proposed protective order should be presented as an exhibit to the motion.
`The parties are urged to operate under the Board’s default protective order,
`should that become necessary. See Default Protective Order, Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,769–71 (Appendix B). If the parties
`choose to propose a protective order deviating from the default protective
`order, they should submit the proposed protective order jointly. A marked-
`up comparison of the proposed and default protective orders should be
`presented as an additional exhibit to the motion to seal, so that the difference
`can be understood readily. The parties should contact the Board if they
`cannot agree on the terms of the proposed protective order.
`The Board has a strong interest in the public availability of the
`proceedings. Redactions should be limited strictly to isolated passages
`consisting entirely of confidential information. The thrust of the underlying
`argument or evidence must be clearly discernible from the redacted version.
`Information subject to a protective order will become public if identified in a
`final written decision in this proceeding. 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
`
`
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`IPR2017-01437
`Patent 7,916,845 B2
`
`
`Notwithstanding the default filing times for an opposition and a reply
`reflected in 37 C.F.R. § 42.25(a):
`(1) an opposition, if any, to a motion to seal is due seven days after
`service of the motion; and
`(2) a reply, if any, to an opposition to a motion to seal is due seven
`days after service of the opposition.
`
`4. Motion to Amend
`Although the filing of a Motion to Amend is authorized under our
`
`Rules, Patent Owner must confer with us before filing any Motion to
`Amend, preferably at least ten (10) business days prior to DUE DATE 1.
`On November 22, 2017, the Board posted on its public website a guidance
`memo from the Chief Administrative Patent Judge on motions to amend in
`view of Aqua Products. 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).
`
`5. Depositions
`The parties are reminded 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.
`
`4
`
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`
`IPR2017-01437
`Patent 7,916,845 B2
`
`
`6. 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. Observations on Cross-Examination
`Observations 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. 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. Transcripts
`The Board will provide a court reporter only for the oral argument set
`for DUE DATE 7. A party who wishes to have a transcript of any
`conference call with the panel, however, may provide its own court reporter
`and shall file the transcript as an exhibit in the proceeding as soon as
`practical.
`
`5
`
`
`
`IPR2017-01437
`Patent 7,916,845 B2
`
`
`B. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the proceedings. The due dates apply to each of the proceedings. The
`schedules for each proceeding have been set to be the same. The
`proceedings, however, are not being consolidated by the Board. Each
`proceeding will be decided on the record developed in 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 a change of DUE DATES 6 and 7.
`For DUE DATES 1 through 5, the parties may stipulate to dates for a
`particular due date that differ in each proceeding (e.g., DUE DATE 2 for one
`proceeding can be stipulated to be different than DUE DATE 2 for the other
`proceeding).
`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
`
`6
`
`
`
`IPR2017-01437
`Patent 7,916,845 B2
`
`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
`Each party must file any observations on the cross-examination
`a.
`testimony of a reply witness 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
`Each party must file any response to an observation on cross-
`a.
`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 to 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.
`
`7
`
`
`
`IPR2017-01437
`Patent 7,916,845 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ....................................................................... February 5, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .............................................................................. April 5, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .............................................................................. May 4, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ May 25, 2018
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ............................................................................. June 11, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ June 18, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................. June 28, 2018
`Oral argument (if requested)
`
`8
`
`
`
`IPR2017-01437
`Patent 7,916,845 B2
`
`FOR PETITIONER:
`Lori A. Gordon
`Michael B. Ray
`Ryan C. Richardson
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-PTAB@skgf.com
`mray-PTAB@skgf.com
`rrichardson-PTAB@skgf.com
`
`
`FOR PATENT OWNER:
`Erika H. Arner
`Kevin D. Rodkey
`Benjamin A. Saidman
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`kevin.rodkey@finnegan.com
`benjamin.saidman@finnegan.com
`
`
`9
`
`
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