Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TOMTOM, INC., Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02023
`Patent 6,434,212
`____________
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and CHRISTA P.
`ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`AMENDED SCHEDULING ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TOMTOM, INC., Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02023
`Patent 6,434,212
`____________
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and CHRISTA P.
`ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`AMENDED SCHEDULING ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`IPR2017-02023
`Patent 6,434,212
`
`
`BACKGROUND
`I.
`On June 7, 2018, a conference call was held between counsel for the
`parties and Judges Stephens and Zado.
`The conference call was convened to discuss changes to the
`Scheduling Order sought by the parties in view of our Order of May 16,
`2018 (Paper 10) expanding the grounds of institution in this proceeding in
`light of SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24,
`2018). Patent Owner requests changing Due Dates 1, 2, 4, and 5 to July 13,
`2018; October 5, 2018; October 26, 2018; and November 9, 2018,
`respectively (Exhibit 3001; see Paper 8 (Scheduling Order) and Paper 9
`(Joint Stipulation to Modify the Scheduling Order)) setting forth the Due
`Dates in this proceeding). Petitioner opposes Patent Owner’s proposed
`schedule changes, except for an offer to shift Due Date 1 to June 27, 2018
`(id.). Specifically, Petitioner contends Due Date 1 and Due Date 2 have
`already been adjusted once (Paper 9) and Patent Owner was on notice of
`SAS).
`
`II. ANALYSIS
`We initially instituted trial on Petitioner’s asserted ground that claims
`1–5 are unpatentable under 35 U.S.C. § 103(a) over Jimenez,1 Levi,2 and
`“knowledge of a person having ordinary skill in the art” (Paper 1, 5–6). Our
`Order of May 16, 2018 expanded the trialfrom one ground addressing claims
`1–5 to two different grounds addressing claims 1–8 (Paper 10). Specifically,
`
`
`1 Jimenez et al., U.S. Patent 4,367,752 (Ex. 1002) (hereinafter “Jimenez”)
`2 Levi et. al., U.S. Patent 5,583,776 (Ex. 1003) (hereinafter “Levi”)
`
`
`2
`
`
`
`IPR2017-02023
`Patent 6,434,212
`
`we modified our decision to institute trial on Petitioner’s asserted grounds
`that claims 1–8 are unpatentable over (i) Jimenez, Levi, and “knowledge of a
`person having ordinary skill in the art” and (ii) claims 1–8 are unpatentable
`over Jimenez, Ebeling,3 and “knowledge of a person having ordinary skill in
`the art” (id.).
`Petitioner contends that each ground has a similar first reference
`(Jimenez) and thus, the work required due to our Order is not significant
`enough to warrant Patent Owner’s proposed changes to the schedule.
`Petitioner further expresses concern that Patent Owner’s proposed changes
`to the schedule would result in only one week between Due Date 5 and Due
`Date 6, whereas under the current schedule there are two weeks between
`these due dates.
`We are not persuaded by Petitioner’s argument based on SAS. The
`Joint Stiuplation to Modify the Scheduling Order (Paper 9) was filed on
`April 4, 2018, before the Supreme Court decision in SAS and before our
`May 16, 2018 Order.
`
`In our Order, we not only expanded the number of claims on which
`we instituted trial, but also the grounds. Thus, Patent Owner’s request for
`more time is reasonable. Petitioner has not identified any undue prejudice it
`would suffer if we grant Patent Owner’s request. To the extent Petitioner is
`concerned about having only one week, instead of two, between Due Date 5
`and Due Date 6, our the amended schedule (set forth below in the Amended
`
`
`3 Ebeling et. al., U.S. Patent 6,145,389 (Ex. 1004)
`
`
`3
`
`
`
`IPR2017-02023
`Patent 6,434,212
`
`Due Date Appendix) maintains the original two weeks between these due
`dates.
`
`In light of the foregoing, Patent Owner’s request is granted and the
`current Scheduling Order is replaced by the Amended Due Date Appendix.
`We note we have amended other dates to account for the changes to Due
`Date 1. We have not changed Due Date 7, the date for the final argument.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the schedule set forth in the original Scheduling
`Order (Paper 8) as amended (Paper 9) is reset as set forth in the following
`Amended Due Date Appendix.
`
`
`
`
`
`
`4
`
`
`
`IPR2017-02023
`Patent 6,434,212
`
`AMENDED DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................... OPTIONAL
`
`DUE DATE 1 .............................................................................. July 13, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ October 5, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... October 12, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ....................................................................... October 26, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................... November 9, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. November 23, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ................................................................... December 11, 2018
`Oral argument (if requested)
`
`5
`
`
`
`IPR2017-02023
`Patent 6,434,212
`
`PETITIONER:
`Dipu A. Doshi
`Michael S. Marcus
`Megan R. Wood
`BLANK ROME LLP
`ddoshi@blankrome.com
`mwood@blankrome.com
`mmarcus@blankrome.com
`
`
`PATENT OWNER:
`
`Walter D. Davis, Jr.
`Wayne M. Helge
`Aldo Noto
`DAVIDSON BERQUIST JACKSON &
`GOWDEY, LLP
`wdavis@dbjg.com
`whelge@dbjg.com
`anoto@dbjg.com
`
`
`6
`
`
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