Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 14
`Entered: July 10, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00369 (Patent 9,313,155 B2)
`Case IPR2018-00397 (Patent 9,306,886 B2)
`Case IPR2018-00404 (Patent 8,935,351 B2)
`Case IPR2018-00408 (Patent 9,338,111 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PER CURIAM.
`
`SCHEDULING ORDER
`
`
`
`1 This Scheduling Order applies to each of the four cases. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`Paper 14
`Entered: July 10, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00369 (Patent 9,313,155 B2)
`Case IPR2018-00397 (Patent 9,306,886 B2)
`Case IPR2018-00404 (Patent 8,935,351 B2)
`Case IPR2018-00408 (Patent 9,338,111 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`PER CURIAM.
`
`SCHEDULING ORDER
`
`
`
`1 This Scheduling Order applies to each of the four cases. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`
`This Order sets a schedule for trial, including due dates for the parties
`to take action upon institution of the trial. See Due Date Appendix.
`
`A. INITIAL CONFERENCE
`The parties are directed to contact the Board within one month of the
`entry date for this Scheduling Order if there is a need to discuss proposed
`changes to this 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).
`
`B. MEET AND CONFER REQUIREMENT
`The parties are encouraged to engage in meaningful discussion before
`seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for relief
`with the Board. At a minimum, before requesting authorization, the parties
`shall confer with each other in a good-faith effort to resolve the issue for
`which relief is to be sought. Only if the parties cannot resolve the issue on
`their own may a party request a conference call with the Board in order to
`seek authorization to move for relief.2 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) with the other party in an effort to
`resolve the issue; (2) identify with specificity the issue for which agreement
`has not been reached; (3) state the precise relief to be sought; and
`
`
`2 Patent Owner may file a motion to amend without prior authorization, but
`only after conferring with the Board. 37 C.F.R. § 42.121(a).
`2
`
`
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`(4) propose specific dates and times at which both parties are available for
`the conference call.
`
`C. CONFIDENTIAL INFORMATION
`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.
`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.
`
`D. CROSS-EXAMINATION
`Except as otherwise ordered or as the parties might otherwise agree,
`for each due date—
`
`
`
`3
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`
`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.
`
`E. 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. at 48,768. The observations 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.
`
`F. 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.
`
`
`
`4
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`G. PATENT OWNER’S 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.
`
`H. DUE DATES
`The Due Date Appendix 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.
`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, above).
`
`
`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
`5
`
`
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`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 observation on the cross-examination
`testimony of a reply witness (see section E, above) by DUE DATE 4.
`b. Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)).
`c. Each party must file any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 4. Additionally, in its request for oral
`argument, each party should indicate its preferred location (if any) for
`the oral hearing: the main headquarters in Alexandria, Virginia or the
`Texas Regional Office in Dallas, Texas. Please note that, although the
`parties’ preferences will be considered, the location of the oral hearing
`will be decided by the Board based on hearing room resources.
`
`
`
`6
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`
`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.
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`DUE DATE APPENDIX
`INITIAL CONFERENCE CALL…………………………UPON REQUEST
`DUE DATE 1…………….………………………………….October 1, 2018
`
`Patent owner’s response to the petition
`
`
`Patent owner’s motion to amend the patent
`DUE DATE 2…………………………………………….December 21, 2018
`
`Petitioner’s reply to patent owner response to petition
`
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3……………………………………………….January 22, 2019
`
`Patent owner’s reply to petitioner opposition to motion to amend
`DUE DATE 4……………………………………………….February 8, 2019
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`
`
`Request for oral argument
`
`DUE DATE 5……………………………………………...February 22, 2019
`
`Response to observation
`
`Opposition to motion to exclude
`DUE DATE 6………………………………………………….March 1, 2019
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7………………………………………………...March 27, 2019
`Oral argument (if requested)
`
`
`
`
`
`8
`
`
`
`IPR2018-00369 (Patent 9,313,155 B2)
`IPR2018-00397 (Patent 9,306,886 B2)
`IPR2018-00404 (Patent 8,935,351 B2)
`IPR2018-00408 (Patent 9,338,111 B2)
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`
`PATENT OWNER:
`
`Douglas R. Wilson
`Michael F. Heim
`Blaine A. Larson
`HEIM PAYNE & CHORUSH, LLP
`dwilson@hpcllp.com
`mheim@hpcllp.com
`blarson@hpcllp.com
`
`Jamie T. Gallagher
`BIRCH TREE IP LAW & STRATEGY PLLC
`jamie@birchtreeip.com
`
`
`
`
`
`
`
`9
`
`
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