`Tel: 571-272-7822
`
`
`Paper 10
`Entered: December 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`TOSHIBA CORPORATION, TOSHIBA MEMORY CORPORATION, and
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.,
`Petitioners,
`v.
`MACRONIX INTERNATIONAL CO., LTD.,
`Patent Owner.
`
`Case IPR2017-01632
`Patent 8,035,417 B1
`
`
`
`
`
`Before KEN B. BARRETT, JENNIFER S. BISK, and JASON M. REPKO,
`Administrative Patent Judges.
`REPKO, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2017-01632
`Patent 8,035,417 B1
`
`
`No initial conference call is scheduled for this proceeding. If there is
`a need to discuss proposed changes to this Scheduling Order or proposed
`motions, the parties are directed to contact the Board within a month of this
`Order. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–
`66 (Aug. 14, 2012) (guidance regarding initial conference calls).
`
`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 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 (see section B, below).
`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.
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`IPR2017-01632
`Patent 8,035,417 B1
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`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
`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
`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.
`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.
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`IPR2017-01632
`Patent 8,035,417 B1
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`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.
`
`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. OBSERVATION ON CROSS-EXAMINATION
`An 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. The observation must be a concise statement of the
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`IPR2017-01632
`Patent 8,035,417 B1
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`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.
`
`D. PETITIONER’S REPLY
`Notwithstanding the page limit set forth in 37 C.F.R. § 42.24(c),
`petitioner’s reply brief to patent owner response is limited to twenty-five
`(25) pages. See 37 C.F.R. § 42.5(b).
`
`E. MOTION TO AMEND
`Although the filing of a Motion to Amend is authorized under the trial
`Rules, Patent Owner must confer with the Board, preferreably no less than
`ten business days prior to DUE DATE 1, before filing any Motion to
`Amend. The parties are also directed to the Board’s Guidance on Motions to
`Amend in view of Aqua Products (Nov. 21, 2017) on the USPTO’s website
`and available at
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_t
`o_amend_11_2017.pdf .
`
`
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`IPR2017-01632
`Patent 8,035,417 B1
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`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ......................................................................... March 21, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ June 21, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. July 23, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................ August 13, 2018
`Observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................ August 27, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... September 4, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................. September 14, 2018
`Oral argument (if requested)
`
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`IPR2017-01632
`Patent 8,035,417 B1
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`PETITIONER:
`Kevin C. Hamilton
`Steven L. Park
`Gerald T. Sekimura
`DLA PIPER LLP
`kevin.hamilton@dlapiper.com
`steven.park@dlapiper.com
`gerald.sekimura@dlapiper.com
`
`PATENT OWNER:
`Timothy W. Riffe
`Ayan Roy-Chowdhury
`Ryan Chowdhury
`FISH & RICHARDSON P.C.
`riffe@fr.com
`roy-chowdhury@fr.com
`rchowdhury@fr.com
`
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