Trials@uspto.gov
`571-272-7822
`
`
` Paper 10
`
`
` Entered: May 30, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
`
`
`Case IPR2018-00233
`Patent 6,754,440 B2
`__________________________
`
`Before MINN CHUNG, TERRENCE W. McMILLIN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`This Order sets a schedule for trial in this proceeding, including due
`dates for the parties to take action in this trial. See Appendix.
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 10
`
`
` Entered: May 30, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`v.
`MAXELL, LTD.,
`Patent Owner.
`
`
`Case IPR2018-00233
`Patent 6,754,440 B2
`__________________________
`
`Before MINN CHUNG, TERRENCE W. McMILLIN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`This Order sets a schedule for trial in this proceeding, including due
`dates for the parties to take action in this trial. See Appendix.
`
`
`
`
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`A. INITIAL CONFERENCE
`No initial conference call is scheduled for this case. The parties are
`directed to contact the Board within ten (10) business days of the date of
`entry of this Scheduling Order if there is a need to discuss proposed changes
`(i.e., regarding DUE DATES 6 and 7) or any proposed motions, not
`authorized already by our Rules or by this Scheduling Order, which the
`parties anticipate filing during the trial. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (setting forth
`guidance in preparing for the initial conference call).
`The parties’ attention is directed to the following matters.
`
`
`
`B. MOTION TO AMEND
`Patent Owner is reminded that it must confer with the Board before
`filing a Motion to Amend. 37 C.F.R. § 42.121(a). Patent Owner should
`contact the Board to request a conference in sufficient time to ensure that the
`conference is conducted at least one week before DUE DATE 1.
`Patent Owner and Petitioner are directed to the rules governing
`Motions to Amend. 37 C.F.R. §§ 42.24(a)(1), 42.24(c), 42.121.
`
`
`C. 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
`proffering party, to file the motion to seal.
`
`
`
`2
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`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. 48,756, App. B (Aug. 14, 2012).
`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 differences are highlighted. The parties should contact the Board if they
`cannot agree on the terms of the proposed protective order.
`
`
`
`Redactions
`1.
`The Board has a strong interest in the public availability of the
`proceedings. Redactions should be limited strictly to isolated passages
`consisting of confidential information. The thrust of the underlying
`argument or evidence must be discernable from the redacted version.
`
`
`
`2. Confidential Information in Final Written Decisions
`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
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`D. MEET AND CONFER REQUIREMENT
`The panel encourages the 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,
`either 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, the requesting
`party shall: (1) certify that it has in good-faith conferred (or attempted to
`confer, if the request is a time-sensitive emergency) with the other party in
`an effort to resolve the issue; (2) identify with specificity but without
`argument the issue for which agreement has not been reached; (3) state the
`precise relief to be sought; and (4) propose specific dates and times at which
`both parties are available for the conference call.
`
`
`E. DUE DATES
`The Appendix to this Order specifies due dates for the parties to take
`action in this trial. 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 any stipulation, specifically identifying the changed due dates,
`must be filed promptly with the Board. The parties may not stipulate to an
`extension of DUE DATES 6 and 7.
`Regardless of whether the parties stipulate to a change of DUE DATE
`4, requests for oral argument must be filed no later than the date set forth in
`this order for DUE DATE 4, for Board planning purposes.
`
`
`
`4
`
`
`
`IPR2018-00233
`Patent 6,754,440 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 D, below).
`
`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. In addition to the rules concerning Motions to Amend
`mentioned above, the patent owner is directed to the rules governing Patent
`Owner Responses. 37 C.F.R. §§ 42.24(b), (d). 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 and fully briefed 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. In addition to the rules
`concerning Motions to Amend mentioned above, the petitioner is directed to
`the rules governing Replies. 37 C.F.R. §§ 42.24(c), (d).
`
`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.
`5
`
`
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`DUE DATE 4
`4.
`a.
`Each party must file observations on the cross-examination
`
`testimony of a reply witness (see section E, 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.
`
`DUE DATE 5
`5.
`a.
`Each party must file any responses to observations 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.
`
`DUE DATE 6
`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.
`
`The panel is available to hear oral argument, if requested, at the
`Silicon Valley Regional Office in San Jose, California.
`
`
`
`
`
`6
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`F. 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.
`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.
`
`
`G. OBSERVATIONS ON CROSS-EXAMINATION
`Because no further substantive paper is permitted after the reply,
`observations on cross-examination may be filed to draw the Board’s
`attention to relevant cross-examination testimony of a reply witness. See
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. Each
`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.
`
`
`
`7
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`
`DUE DATE APPENDIX
`INITIAL CONFERENCE CALL ............................................. Upon Request
`DUE DATE 1 ........................................................................ August 23, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. November 16, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................... December 21, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ....................................................................... January 14, 2019
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ....................................................................... January 28, 2019
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ....................................................................... February 4, 2019
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ..................................................................... February 21, 2019
`
`Oral argument (if requested)
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2018-00233
`Patent 6,754,440 B2
`
`PETITIONER:
`
`David Garr
`Greg Discher
`Anupam Sharma
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gdischer@cov.com
`asharma@cov.com
`
`
`PATENT OWNER:
`
`Robert Pluta
`Amanda Bonner
`Saqib Siddiqui
`Bryan Nese
`MAYER BROWN, LLP
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`
`
`
`9
`
`
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