Trials@uspto.gov
`571.272.7822
`
`Paper 10
`Entered: January 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HAAG-STREIT AG,
`Petitioner,
`
`v.
`
`EIDOLON OPTICAL, LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01311
`Patent 6,547,394 B2
`_______________
`
`
`Before PATRICK R. SCANLON, SCOTT A. DANIELS, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`JESCHKE, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571.272.7822
`
`Paper 10
`Entered: January 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HAAG-STREIT AG,
`Petitioner,
`
`v.
`
`EIDOLON OPTICAL, LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01311
`Patent 6,547,394 B2
`_______________
`
`
`Before PATRICK R. SCANLON, SCOTT A. DANIELS, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`JESCHKE, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`A. GENERAL INSTRUCTIONS
`
`1.
`
`Requests for an Initial Conference Call
`
`An initial conference call will be scheduled only upon request by
`
`either party within a month of this Order. To request a conference call, the
`
`parties should consult with each other and submit a list of proposed dates
`
`and times for the call. 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) (“Trial Practice Guide”), for guidance in
`
`preparing for the call. The parties should be prepared to discuss any
`
`proposed changes to the schedule and any motions the parties anticipate
`
`filing during the trial. The parties must request an initial conference call if
`
`any party is aware of any conflicts with DUE DATE 7 in the Appendix of
`
`this Scheduling Order (the date of oral argument, if requested).
`
`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 should be presented as an exhibit
`
`to the motion. 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, Trial Practice Guide, 77 Fed. Reg. at 48,756 (App.
`
`B). 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.
`
`2
`
`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`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 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 Trial Practice
`
`Guide, 77 Fed. Reg. at 48,761.
`
`3. Meet and Confer Requirement
`
`The parties are encouraged to engage in meaningful discussions
`
`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. 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(s) for which agreement has
`
`not been reached; (3) state the precise relief to be sought; and (4) propose
`
`3
`
`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`specific dates and times for which both parties are available for the
`
`conference call.
`
`4.
`
`Depositions
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Trial Practice Guide, 77 Fed. Reg. at 48,772 (App. 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.
`
`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 deposition 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.
`
`5.
`
`Cross-Examination
`
`Except as the parties might otherwise agree, for each due date:
`
`(1) cross-examination of a witness begins after any supplemental evidence is
`
`due and (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. 37 C.F.R. § 42.53(d)(2).
`
`6.
`
`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
`
`4
`
`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`parties may not stipulate to an extension of the request for oral argument
`
`beyond the date provided in the Due Date Appendix.
`
`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. 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.
`
`B. DUE DATES
`
`This Order sets due dates for the parties to take action after institution
`
`of this 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 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, or to the requests for oral hearing.
`
`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.
`
`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).
`
`5
`
`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`
`a.
`
`Response to the petition. 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. Motion to amend the patent. 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 C.F.R. § 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 (1) 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_amend_11_2017.pdf), and (2) the Board’s decision in Western Digital
`
`Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (PTAB April 25, 2018)
`
`(Paper 13), which provides 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.
`
`6
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`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`Either party may file a motion to exclude evidence (37 C.F.R.
`
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)).
`
`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) 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 parties’ arguments.
`
`
`
`
`
`7
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`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ................................................................. April 11, 2019
`
`Patent Owner’s response to the Petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... July 11, 2019
`
`Petitioner’s reply in support of the Petition
`
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ............................................................... August 12, 2019
`
`Patent Owner’s sur-reply to Petitioner’s reply
`
`Patent Owner’s reply in support of the motion to amend
`
`DUE DATE 4 .......................................................... September 11, 2019
`
`Petitioner’s sur-reply to Patent Owner’s reply in support of the
`
`motion to amend
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .......................................................... September 18, 2019
`
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................... September 25, 2019
`
`Reply to opposition to motion to exclude
`
`Request for pre-hearing conference
`
`DUE DATE 7 ............................................................... October 9, 2019
`
`Oral argument (if requested)
`
`
`
`
`
`8
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`
`
`IPR2018-01311
`Patent 6,547,394 B2
`
`PETITIONER:
`
`Donald R. McPhail (lead counsel)
`Ryan White
`Daniel J. Krieger
`TAFT, STETTINIUS & HOLLISTER LLP
`dmcphail@taftlaw.com
`rwhite@taftlaw.com
`dkrieger@taftlaw.com
`
`
`PATENT OWNER:
`
`Jodi-Ann McLane (lead counsel)
`Joshua A. Stockwell
`Alissa A. Digman
`MCINNES & MCLANE, LLP
`jodi@mcmcip.com
`josh@mcmcip.com
`alissa@mcmcip.com
`
`
`
`9
`
`
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