Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 15
`Entered: May 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`____________
`
`
`
`
`
`
`
`Before BART A. GERSTENBLITH, SCOTT C. MOORE, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 15
`Entered: May 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`____________
`
`
`
`
`
`
`
`Before BART A. GERSTENBLITH, SCOTT C. MOORE, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`
`A. GENERAL INSTRUCTIONS
`1. INITIAL CONFERENCE CALL
`Unless a party requests otherwise, we will not conduct an initial
`conference call as described in the Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). In lieu of such a call, we
`instruct the parties as follows:
`(a) If a party wishes to request an initial conference call, that party
`shall request the call no later than 30 days after the institution of
`trial;
`(b) A request for a conference call shall include: (a) a list of
`proposed motions, if any, to be discussed during the call and (b) a
`list of dates and times when the parties are available for the call;
`and
`(c) The parties shall be prepared to discuss during the initial
`conference call their concerns, if any, relating to the schedule in
`this proceeding as set forth below.
`Absent good cause shown, we will not conduct an initial conference call
`later than 30 days after the institution of a trial.
`
`2. 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. 48,756, App. B (Aug. 14, 2012). If the parties choose
`
`2
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`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 limited strictly 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.
`
`3. MOTION 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). If Patent Owner
`intends to file a motion to amend, Patent Owner should arrange 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://go.usa.gov/x9ARw.
`
`3
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`
`4. CONFERENCE CALLS
`Prior to requesting a conference call, the parties shall attempt in good
`faith effort to resolve the issue. The email requesting a conference shall
`certify that such an effort was made.
`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 a good-faith
`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.
`The panel will not record conference calls or arrange for court
`reporters to be on such calls. If either party desires a transcript of a call, that
`party may provide a court reporter for the call without permission of the
`other party or the panel. In that case, the party must be sure to inform the
`other parties and the panel of the court reporter’s presence, either in advance
`of the call or at the very beginning of the call. In addition, during the
`
`4
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`conference call, that party should seek authorization to file the transcript
`(without any modification), as an exhibit.
`
`5. DEPOSITIONS
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide apply to this proceeding. See 77 Fed. Reg.
`48,756, 48,772 (Appendix D) (Aug. 14, 2012), http://go.usa.gov/x9ARh.
`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.
`
`6. MOTION TO EXCLUDE
`The parties shall not use a Motion to Exclude for any purpose other
`than to raise admissibility issues under the Federal Rules of Evidence. See
`37 C.F.R. §§ 42.61–64. If an issue arises with regard to a paper being out of
`proper scope under 37 C.F.R. § 42.23(a), the parties shall contact the Board
`in a timely manner to raise the matter. See, e.g., IPR2014-00148, Paper 42.
`
`7. SUPPLEMENTAL EVIDENCE AND SUPPLEMENTAL INFORMATION
`It is important to distinguish supplemental evidence (see 37 C.F.R.
`§ 42.64(b)(2)) from supplemental information (see 37 C.F.R. § 42.123). The
`
`5
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`rules do not contemplate more than one cycle of objection to evidence and
`subsequent supplemental evidence to cure the objection.
`
`8. OBSERVATIONS ON CROSS-EXAMINATION
`Observations on cross-examination provide 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. 48,756, 48,768 (Aug. 14, 2012). 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; circumventing the length requirement by
`use of footnote is inappropriate. Regardless of length, observations should
`not be argumentative. The opposing party may respond to the observation.
`Any response must be equally concise and specific.
`
`9. CLAIM CONSTRUCTION
`As stated in the Decision to Institute, claim construction in the
`Decision is preliminary. The parties may further develop argument and
`evidence during the proceeding.
`
`B. SCHEDULE AND 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.
`
`6
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`
`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.1).
`
`1. CROSS EXAMINATION
`Except as the parties might otherwise agree, for each due date, cross-
`examination:
`(a) begins after any supplemental evidence is due; and
`(b) ends no later than a week before the filing date for any paper in
`which the cross-examination testimony is expected to be used.
`37 C.F.R. § 42.53(d)(2).
`
`2. DUE DATE 1
`By DUE DATE 1, the patent owner must file:
`(a) any response to the petition (37 C.F.R. § 42.120), and
`(b) any motion to amend the patent (37 C.F.R. § 42.121).
`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.
`
`3. DUE DATE 2
`By DUE DATE 2, the petitioner must file:
`(a) any reply to the patent owner’s response and
`(b) any opposition to a motion to amend.
`
`7
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`
`4. DUE DATE 3
`By DUE DATE 3, the patent owner must file any reply to the
`petitioner’s opposition to patent owner’s motion to amend.
`
`5. DUE DATE 4
`By DUE DATE 4, each party must file:
`(a) any observations on the cross-examination testimony of a reply
`witness (see section A.8);
`(b) any motion to exclude evidence (37 C.F.R § 42.64(c)); and
`(c) any request for oral argument (37 C.F.R. § 42.70(a)).
`
`6. DUE DATE 5
`By DUE DATE 5, each party must file:
`(a) any response to an observation on cross-examination testimony;
`and
`(b) any opposition to a motion to exclude evidence.
`
`7. DUE DATE 6
`By DUE DATE 6, each party must file any reply for a motion to
`exclude evidence.
`
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7. Oral argument will be held at the USPTO main office in
`Alexandria, Virginia.
`
`
`8
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`
`DUE DATE APPENDIX
`DUE DATE 1 .............................................................................. July 25, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... October 17, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................... November 14, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... November 28, 2018
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................... December 10, 2018
`Response to observations
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... December 17, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................ January 30, 2018
`Oral argument (if requested)
`
`
`9
`
`
`
`Case IPR2018-00067
`Patent 8,577,813 B2
`
`
`
`PETITIONER:
`
`Jason Mudd
`Eric Buresh
`ERISE IP, P.A.
`jason.mudd@eriseip.com
`eric.buresh@eriseip.com
`
`Roshan Mansinghani
`Jonathan Stroud
`UNIFIED PATENTS INC.
`roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`PATENT OWNER:
`
`Jim Glass
`Tigran Guledjian
`Christopher Mathews
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
