Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 11
`December 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RIDDELL, INC.,
`Petitioner,
`v.
`KRANOS IP II CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-01164
`Patent 6,434,755 B1
`____________
`
`
`Before HYUN J. JUNG, JAMES A. TARTAL, and
`JEFFREY A. STEPHENS, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 11
`December 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RIDDELL, INC.,
`Petitioner,
`v.
`KRANOS IP II CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-01164
`Patent 6,434,755 B1
`____________
`
`
`Before HYUN J. JUNG, JAMES A. TARTAL, and
`JEFFREY A. STEPHENS, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2018-01164
`Patent 6,434,755 B1
`
`
`This Order sets a schedule for trial, including DUE DATES for the
`parties to take action upon entry of the Decision to Institute. See APPENDIX
`OF DUE DATES FOR IPR2018-01164. The trial will be administered in a just,
`speedy, and inexpensive manner such that pendency before the Board is no
`more than one year after institution. 37 C.F.R. §§ 42.1(b) and 42.100(c).
`I. GENERAL INSTRUCTIONS
`A. Request for an Initial Conference Call
`An initial conference call will be scheduled only upon request by
`either party within thirty (30) days of this Order. To request a conference
`call, the parties should consult with each other and then inform the Board of
`the following: (a) two or more dates and times when both parties are
`available for the call, and (b) any proposed changes to this Order or
`proposed motions that have not been authorized in this Order or other prior
`Order or Notice. If an initial conference call is scheduled, the parties are
`directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,765–66 (Aug. 14, 2012) (available at https://go.usa.gov/xU7GK)
`(“Practice Guide”) (guidance in preparing for the initial conference call), for
`guidance in preparing for the call, and should be prepared to discuss any
`proposed changes to the schedule and any motions the parties anticipate
`filing during the trial.
`
`B. Resolution of Disputes – Meet and Confer Requirement
`The Board encourages parties to resolve disputes, including disputes
`relating to discovery, on their own and in accordance with the precepts of
`securing a just, speedy, and inexpensive resolution, 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
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`IPR2018-01164
`Patent 6,434,755 B1
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`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. 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 for which both parties are available for the
`conference call.
`
`C. Word Count, Page Limit, and Type Face Requirements
`The parties must be familiar with, and may not seek to circumvent,
`our rules governing the filing of documents, including word counts, page
`limits, and type face requirements. See 37 C.F.R. §§ 42.6, 42.24.
`“Excessive wording in figures, drawings or images, deleting spacing
`between words, or using excessive acronyms or abbreviations for word
`phrases, in order to bypass the rules on word count, are not reasonable.”
`Google Inc. v. Makor Issues & Rights Ltd., No. IPR2016-01535, slip op. at 7
`(PTAB, Dec. 1, 2016) (Paper 8); see also, Arctic Cat Inc. v. Polaris Indus.
`Inc., No. IPR2017-00433 (PTAB, June 22, 2017) (Paper 15); Google Inc. v.
`Porto Tech. Co. Ltd., No. IPR2016-00022, (PTAB, Nov. 23, 2016)
`(Paper 25). Cutting and pasting text into a document as an image is
`unreasonable unless the text is ancillary to an existing image or the text
`comprises pre-existing labels as part of a figure, or unless any added text is
`included manually in the final word count. The failure to use normal
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`IPR2018-01164
`Patent 6,434,755 B1
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`citations in order to reduce the word count by, for example, deleting spacing,
`is inappropriate and may result in sanctions. See Axon Enter., Inc. v. Digital
`Ally, Inc., No. IPR2017-00375, slip op. at 2, n.2 (PTAB, June 6, 2017)
`(Paper 9). Counsel for both parties will review the cited papers above, and
`by signing the certification under 37 C.F.R. § 42.24(d), counsel is attesting
`that any filing they make in this proceeding is in compliance with our
`regulations as interpreted in the above cited papers. Failure to comply with
`these requirements may result in expungement of any paper or brief not in
`compliance and/or sanctions.
`
`D. Procedures for Entry of a Protective Order
`No protective order shall apply to this proceeding until the parties
`propose entry of one and the Board approves it. If either party files a motion
`to seal a document before entry of a protective order, a jointly proposed
`protective order should be presented as an exhibit to 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, 77 Fed. Reg. at 48,771 (App. B) (the “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 must 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
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`IPR2018-01164
`Patent 6,434,755 B1
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`clearly discernible from the redacted versions. We also advise the parties
`that information subject to a protective order 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, 77 Fed. Reg. at 48,761.
`
`E. Testimony
`The Testimony Guidelines appended to the Practice Guide,
`Appendix D, apply to this proceeding. The Board may impose an
`appropriate sanction on any party who fails to adhere to the Testimony
`Guidelines, including reasonable expenses and attorney fees incurred by a
`party affected by another party’s misconduct. 37 C.F.R. § 42.12.
`Except as the parties might otherwise agree, for each due date, cross-
`examination of a witness begins after any supplemental evidence is due and
`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). Should a party submit a deposition transcript of a witness’s
`testimony as an exhibit in this proceeding, the submitting party shall file the
`full transcript of the testimony 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.
`
`F. Pro Hac Vice Admission
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause. 37 C.F.R. § 42.10(c). The parties are
`authorized in the Notice of Filing Date Accorded to Petition to file motions
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`IPR2018-01164
`Patent 6,434,755 B1
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`for pro hac vice admission. A pro hac vice motion may be filed no sooner
`than twenty-one (21) days after service of the petition, and any opposition
`must be filed no later than one week after the filing of the underlying
`motion. No reply to any opposition shall be filed unless further authorized.
`
`G. Requests for 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 Appendix to this Order.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the United States Patent and Trademark Office
`headquarters in Alexandria, Virginia. The parties may request that the oral
`argument instead be held at one of the Regional Offices in Detroit,
`Michigan, Dallas, Texas, Denver, Colorado, and San Jose, California by
`jointly informing the Board of that request within one month of this Order.
`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.
`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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`IPR2018-01164
`Patent 6,434,755 B1
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`
`II. DUE DATES
`The Appendix specifies DUE DATES for the parties to take action in
`this 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 filed
`promptly with the Board. Regardless of whether the parties stipulate to a
`change of DUE DATE 4, for the Board’s planning purposes, any request for
`oral argument must be filed no later than the date for DUE DATE 4 set forth
`in this Order. The parties may not stipulate to an extension of DUE DATE 6
`or DUE DATE 7.
`In stipulating different dates, 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.
`A. DUE DATE 1
`The patent owner must file any response to the petition (37 C.F.R.
`§ 42.120) and any motion to amend the patent (37 C.F.R. § 42.121) by
`DUE DATE 1. If the patent owner elects not to file a response, 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.
`If the patent owner elects to file a motion to amend, prior
`authorization from the Board is not required. Nevertheless, Patent Owner
`must confer with the Board before filing such a motion. 37 C.F.R.
`§ 42.121(a). To satisfy this requirement, Patent Owner should request a
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`IPR2018-01164
`Patent 6,434,755 B1
`
`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 (available at https://www.uspto.gov/sites/
`default/files/documents/guidance_on_motions_to_amend_11_2017.pdf). In
`addition, the parties are directed to the Board’s decision in Western Digital
`Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (PTAB April 25, 2018)
`(Paper 13) (informative), which provides guidance on motions to amend.
`B. 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.
`C. DUE DATE 3
`The patent owner must file any sur-reply to the petitioner’s reply and
`any reply to the petitioner’s opposition to any motion to amend by
`DUE DATE 3. See Trial Practice Guide Update, 14–15, available at
`https://go.usa.gov/xU7GP; see also 83 Fed. Reg. 38,989 (Aug. 13, 2018)
`(notifying the public of the availability of the Trial Practice Guide Update).
`D. DUE DATE 4
`The petitioner must file any sur-reply to the patent owner’s reply to
`the opposition to the motion to amend by DUE DATE 4. See Trial Practice
`Guide Update, 14–16.
`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. See Trial Practice Guide Update, 16–18.
`E. DUE DATE 5
`Each party must file any opposition to a motion to exclude evidence
`by DUE DATE 5.
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`IPR2018-01164
`Patent 6,434,755 B1
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`F. DUE DATE 6
`Each party must file any reply to a motion to exclude evidence and
`any request for a pre-hearing conference by DUE DATE 6.
`G. DUE DATE 7
`If requested by either party, an oral hearing will be held on
`DUE DATE 7. 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 arguments of the parties.
`
`
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`IPR2018-01164
`Patent 6,434,755 B1
`
`
`APPENDIX OF DUE DATES FOR IPR2018-01164
`
`DUE DATE 1 .................................................................... March 1, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... May 31, 2019
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... June 28, 2019
`Patent Owner’s sur-reply to Petitioner’s reply
`Patent Owner’s reply to Petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... July 26, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`Request for oral argument (no stipulated extension allowed)
`DUE DATE 5 ....................................................................August 2, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. August 16, 2019
`Reply to opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 ...............................................................September 5, 2019
`Oral argument (if requested)
`
`
`
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`IPR2018-01164
`Patent 6,434,755 B1
`
`For PETITIONER:
`
`Rodger K. Carreyn
`Andrew T. Dufresne
`PERKINS COIE LLP
`RCarreyn@perkinscoie.com
`ADufresne@perkinscoie.com
`
`
`For PATENT OWNER:
`
`James J. Lukas, Jr.
`Gary Jarosik
`Richard D. Harris
`Benjamin P. Gilford
`Callie J. Sand
`GREENBERG TRAURIG, LLP
`lukasj@gtlaw.com
`jaroskg@gtlaw.com
`harrisr@gtlaw.com
`gilfordb@gtlaw.com
`sandc@gtlaw.com
`
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`
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