`571-272-7822
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`Paper No. 8
`Entered: August 28, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`NIKON CORPORATION,
`Petitioner,
`
`v.
`
`ASML NETHERLANDS B.V.
`CARL ZEISS AG,
`Patent Owner.
`____________
`
`Case IPR2018-00687
`Patent 6,731,335 B1
`____________
`
`
`Before JEFFREY S. SMITH, DAVID C. MCKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
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`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
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`IPR2018-00687
`Patent 6,731,335 B1
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`A. GENERAL INSTRUCTIONS
`1.
`Initial Conference Call
`The parties are directed to contact the Board within a month of this Order if
`there is a need to discuss proposed changes to this Scheduling Order or proposed
`motions that have not been authorized in this Order or other prior Order or Notice.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14,
`2012) (“Practice Guide”) (guidance in preparing for the initial conference call). A
`request for an initial conference call shall include a list of proposed motions, if
`any, to be discussed during the call.
`2.
`Protective Order
`No protective order shall apply to this proceeding until the Board enters one.
`If either party files a motion to seal before entry of a protective order, a jointly
`proposed protective order shall be filed as an exhibit with the motion. The Board
`encourages the parties to adopt the Board’s default protective order if they
`conclude that a protective order is necessary. See Practice Guide, App’x B
`(Default Protective Order). If the parties choose 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 between the two and explain why
`good cause exists to deviate from the default protective order.
`The Board has a strong interest in the public availability of trial proceedings.
`Redactions to documents filed in this proceeding should be limited to the minimum
`amount necessary to protect confidential information, and 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
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`may 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
`Practice Guide 48,761.
`3.
`Discovery Disputes
`The Board encourages parties to resolve disputes relating to discovery on
`their own. To the extent that a dispute arises between the parties relating to
`discovery, the parties must 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.
`4.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to the
`Trial Practice Guide, 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.
`5.
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`Cross-examination ordinarily 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.
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`Oral Argument
`6.
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a). To
`permit the Board sufficient time to schedule the oral argument, the parties may not
`stipulate to an extension of the request for oral argument beyond the date set forth
`in the Due Date Appendix.
`Unless the Board notifies the parties otherwise, oral argument, if requested,
`will be held at the USPTO headquarters in Alexandria, Virginia.
`The parties may request that the oral argument instead be held at the Detroit,
`Michigan, USPTO Regional Office. The parties should meet and confer, and
`jointly propose the parties’ preference at the initial conference call, if requested.
`Alternatively, the parties may jointly file a paper stating their preference for the
`hearing location within one month of this order. Note that the Board may not be
`able to honor the parties’ preference of hearing location due to, among other
`things, the availability of hearing room resources and the needs of the panel. The
`Board will consider the location request and notify the parties accordingly if a
`request for change in location is granted.
`Seating in the Board’s hearing rooms may be limited, and will be available
`on a first-come, first-served basis. If either party anticipates that more than five (5)
`individuals will attend the argument on its behalf, the party should notify the Board
`as soon as possible, and no later than the request for oral argument. Parties should
`note that the earlier a request for accommodation is made, the more likely the
`Board will be able to accommodate additional individuals.
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`B. DUE DATES
`This order sets due dates for the parties to take action after institution of the
`proceeding. The parties may stipulate 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 an extension of DUE DATES 6 and 7, or to the requests for oral
`hearing.
`In stipulating different times, the parties should consider the effect of the
`stipulation on times to object to evidence (37 U.S.C. § 42.64(b)(1)), to supplement
`evidence (§ 42.64(b)(2)), to conduct cross-examination (§ 42.53(d)(2)), and to
`draft papers depending on the evidence and cross-examination testimony.
`1.
`DUE DATE 1
`Patent Owner may file—
`a.
`A response to the petition (37 U.S.C. § 42.120). If Patent Owner
`elects not to file a response, Patent Owner must arrange a conference call with the
`parties and the Board. Patent Owner is cautioned that any arguments for
`patentability not raised in the response may be deemed waived.
`b.
`A motion to amend the patent (37 U.S.C. § 42.121). 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. 37 U.S.C. § 42.121(a). To satisfy this requirement, Patent Owner should
`request a conference call with the Board no later than two weeks prior to DUE
`DATE 1. The parties are directed to the Board’s Guidance on Motions to Amend
`in view of Aqua Products
`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_to_am
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`end_11_2017.pdf), and Western Digital Corp. v. SPEX Techs., Inc., Case
`IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (providing information and
`guidance on motions to amend).
`2.
`DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`3.
`DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may file a reply to the opposition to the motion to amend.
`4.
`DUE DATE 4
`Petitioner may file a sur-reply to Patent Owner’s reply to the opposition to
`the motion to amend.
`Either party may file a motion to exclude evidence (37 U.S.C. § 42.64(c)).
`5.
`DUE DATE 5
`Either party may file an opposition to a motion to exclude evidence.
`6.
`DUE DATE 6
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7.
`DUE DATE 7
`The oral argument (if requested by either party) shall be held on this date.
`Approximately one month prior to the argument, the Board will issue an order
`setting the start time of the hearing and the procedures that will govern the parties’
`arguments.
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`DUE DATE APPENDIX
`INITIAL CONFERENCE CALL ............................................. Upon Request
`DUE DATE 1 ............................................................................ November 28, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2 ............................................................................ February 28, 2019
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ........................................................................... March 28, 2019
`Patent Owner’s sur-reply to reply
`Patent owner’s reply opposition to motion to amend
`DUE DATE 4 ........................................................................... April 29, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`Request for oral argument1
`DUE DATE 5 ........................................................................... May 6, 2019
`Opposition to motion to exclude
`DUE DATE 6 ........................................................................... May 13, 2019
`Reply to opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 ........................................................................... May 29, 2019
`Oral argument (if requested)
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`1 The parties may not stipulate to extend the date to request oral argument.
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`IPR2018-00687
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`PETITIONER:
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`David L. Fehrman
`David T. Yang
`MORRISON & FOERSTER LLP
`dfehrman@mfo.com
`dyang@mofo.com
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`PATENT OWNER:
`
`Kurt L. Glitzenstein
`John C. Phillips
`Chris Marchese
`Kim Leung
`FISH & RICHARDSON P.C.
`glitzenstein@fr.com
`phillips@fr.com
`marchese@fr.com
`leung@fr.com
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