Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper No. 11
`Entered: December 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`TECHNO VIEW IP, INC.,
`Exclusive Licensee of the Patent Owner.1
`____________
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`____________
`
`
`
`Before WILLIAM V. SAINDON, PATRICK R. SCANLON, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`
`
`
`SCHEDULING ORDER
`and
`GENERAL INSTRUCTIONS
`37 C.F.R. § 42.5
`
`
`1 TD Vision Corporation S.A. de C.V is the Patent Owner. Paper 4
`(IPR2018-01044), Paper 6 (IPR2018-01045).
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper No. 11
`Entered: December 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`TECHNO VIEW IP, INC.,
`Exclusive Licensee of the Patent Owner.1
`____________
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`____________
`
`
`
`Before WILLIAM V. SAINDON, PATRICK R. SCANLON, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`
`
`
`SCHEDULING ORDER
`and
`GENERAL INSTRUCTIONS
`37 C.F.R. § 42.5
`
`
`1 TD Vision Corporation S.A. de C.V is the Patent Owner. Paper 4
`(IPR2018-01044), Paper 6 (IPR2018-01045).
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`A. GENERAL INSTRUCTIONS
`1. Request for an Initial Conference Call
`Unless at least one of the parties 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). The
`parties must request an initial conference call if either party is aware of any
`conflicts or concerns with DUE DATES 6 or 7 set forth in the Appendix of
`this Scheduling Order. Any request for an initial conference call must be
`made no later than 25 days after the institution of trial.
`2. Standing Procedure for Requests for Conference Calls
`If the parties request a conference call, including an initial conference
`call, the parties must follow these procedures:
`a. Prior to requesting a conference call, the parties must confer in
`an effort to resolve any issue to be discussed with the Board, or
`be prepared to explain to the Board why such a conference was
`not possible.
`b. Parties may request a conference call by contacting the Board at
`the email address or telephone number listed above the caption
`of this Order. Requests via email are expected and preferred;
`requests via telephone should be reserved for time-critical
`circumstances. Requests by email must copy opposing counsel.
`Requests by telephone should include opposing counsel as
`practicable.
`c. The request must include a list of proposed issues and/or
`motions to be discussed during the call.
`
`2
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`
`d. The request may include a brief background discussion of the
`issue(s) and/or motion(s) to be discussed, but must not include
`arguments. Email correspondence between the parties and the
`Board is for administrative purposes only and is not a part of
`the record.
`e. The request must certify that the parties conferred in
`accordance with 2.a., and must indicate the result of the
`conference (e.g., whether the non-requesting party opposes or
`does not oppose the request).
`f. The request must include a list of dates and times when both
`parties are available for the call.
`3. Motions to Seal, Protective Orders, and Confidential Information
`Papers and exhibits filed with the Board are public unless designated
`as confidential when filed. 37 C.F.R. § 42.14. Papers and exhibits may be
`filed as confidential if filed with a motion to seal. Id. Those papers and
`exhibits will remain under seal provisionally until the Board renders its
`decision on the motion. Id. A motion to seal must include a proposed
`protective order, or must refer to a protective order already approved in the
`proceeding. 37 C.F.R. § 42.54(a). A protective order does not exist in this
`proceeding unless the parties file one and the Board approves it. Board
`approval typically does not occur until its decision on a motion to seal,
`although the parties may request a conference call to seek approval prior to a
`decision on a motion to seal if the particular circumstances of the case so
`require.
`Often, a party moves to seal confidential or protective order material
`of the opposing party. In this case, the opposing party is authorized to file a
`
`3
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`response to the motion to seal to address why the motion to seal should be
`granted. Such a response is due within 7 days of the filing of the motion to
`seal and is subject to the same filing requirements (e.g., length, document
`format) as the motion to seal.
`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 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; and the parties must
`explain why the proposed deviations from the default protective order are
`necessary.
`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 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 likely
`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.
`4. Discovery Disputes
`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.
`
`4
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`§ 42.1(b). To the extent that a dispute arises between the parties requiring
`Board intervention, the parties are to follow the procedures for requesting a
`conference call set forth above.
`5. Depositions
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14,
`2012) (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.
`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.
`6. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`a. Cross-examination begins after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`b. 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.
`7. Oral Argument
`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
`
`5
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`notifies the parties otherwise, oral argument, if requested, will be held at the
`USPTO headquarters in Alexandria. Subject to availability, the parties may
`jointly request that the oral argument instead be held at either the San Jose,
`California, or Detroit, Michigan, USPTO Regional Office. 2 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.
`8. Additional Formatting Requirements of Papers and Exhibits
`All papers and exhibits must include at least the proceeding number
`and consecutive page numbers on each page. Citations to exhibits may be in
`whatever manner the submitting party deems appropriate (i.e., stamped or
`original pagination). Each page of an exhibit must also include the exhibit
`number. The filing of complete documents and transcripts is encouraged,
`rather than excerpts. Electronic documents filed with the Board should be
`
`2 Judge Saindon typically hears cases in Alexandria. Judge Beamer typically
`hears cases in San Jose. Judge Scanlon typically hears cases in Detroit.
`
`6
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`text searchable, to the extent feasible (e.g., having undergone optical
`character recognition).
`
`B. 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, or of the request for oral argument. Due to scheduling
`constraints, such as hearing room availability, the parties must request a
`conference call with the panel if there are any conflicts that arise with
`DUE DATE 7 as soon as practicable, which will be modified only upon a
`showing of good cause.
`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.
`1. DUE DATE 1
`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).
`Patent Owner must file any such response or motion to amend by DUE
`DATE 1. If Patent Owner elects not to file anything, 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 will
`
`7
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`be deemed waived. 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 by requesting a conference call under
`the procedures set forth above. See 37 C.F.R. § 42.121(a). The conference
`call must occur at least two weeks before DUE DATE 1 in order to satisfy
`the conferral requirement.
`2. DUE DATE 2
`Petitioner may file a reply to 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 C.F.R
`§ 42.64(c)).
` Either party may file a request for oral argument (37 C.F.R.
`§ 42.70(a)). The due date for the request for oral argument may not be
`changed by stipulation.
`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.
`
`8
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`
`Either party may file a request for a pre-hearing conference.
`7. DUE DATE 7
`The oral argument (if requested by either party) shall be held on this
`
`date.
`
`9
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ................................................................. March 6, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................... June 6, 2019
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... July 8, 2019
`Patent owner’s reply to Petitioner’s opposition to motion to amend
`Patent Owner’s sur-reply to Petitioner’s reply
`
`DUE DATE 4 .................................................................August 6, 2019
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition to the
`motion to amend
`Motion to exclude evidence
`Request for oral argument (parties may not stipulate to an extension
`for the request for oral argument)
`
`DUE DATE 5 ............................................................... August 13, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 .............................................................. August 20, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 .......................................................... September 11, 2019
`Oral argument (if requested)
`
`10
`
`
`
`IPR2018-01044 (Patent 7,666,096 B2)
`IPR2018-01045 (Patent 8,206,218 B2)
`
`For Petitioner:
`
`Abran J. Kean
`Eric A. Buresh
`ERISE IP, P.A.
`abran.kean@eriseip.com
`eric.buresh@eriseip.com
`
`For Patent Owner:
`
`Thomas Kramer
`O’KELLY ERNST & JOYCE, LLC
`tkramer@oelegal.com
`
`Thomas Meagher
`Alan Pattillo
`MEAGHER EMANUEL LAKS GOLDBERG & LIAO, LLP
`tmeagher@meagheremanuel.com
`cpattillo@meagheremanuel.com
`
`
`11
`
`
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