`Tel: 571-272-7822
`
`Paper 9
`Entered: January 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`
`Cases IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)1
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before DANIEL N. FISHMAN, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`1 This Order applies to each referenced case. The parties may not use this
`heading style unless authorized.
`
`
`
`IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)
`
`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.
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`Protective Order
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`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
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`comparison of the proposed and default protective orders showing the
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`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
`
`2
`
`
`
`IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)
`
`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
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`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 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.
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`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
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`impedes, delays, or frustrates the fair examination of a witness.
`
`5.
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`Cross-Examination
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`Except as the parties might otherwise agree, for each due date:
`
`3
`
`
`
`IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)
`
`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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`6.
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`Oral Argument
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`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
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`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.
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`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
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`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
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`accommodate additional individuals.
`
`
`
`B. DUE DATES
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`This order sets due dates for the parties to take action after institution
`
`of the proceeding. The parties may stipulate different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
`
`4
`
`
`
`IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)
`
`notice of the stipulation, specifically identifying the changed due dates, must
`
`be promptly filed. The parties may not stipulate an extension of DUE
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`DATES 6 and 7 or of the date to file requests for oral hearing.
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`In stipulating 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
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`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
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`Patent Owner may file—
`
`a. A response to the petition (37 C.F.R. § 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 not raised in the response may be deemed waived.
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`b. A motion to amend the patent (37 C.F.R. § 42.121). Patent Owner
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`may file a motion to amend without prior authorization from the Board.
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`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 the Board’s Guidance on
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`Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV),
`
`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).
`
`5
`
`
`
`IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)
`
`2. DUE DATE 2
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`Petitioner may file a reply to the Patent Owner’s response.
`
`Petitioner may file an opposition to the motion to amend.
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`3. DUE DATE 3
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`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.
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`4. DUE DATE 4
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`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)).
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`5. DUE DATE 5
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`Either party may file an opposition to a motion to exclude evidence.
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`6. DUE DATE 6
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`Either party may file a reply to an opposition to a motion to exclude
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`evidence.
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`Either party may request that the Board hold a pre-hearing conference.
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`7. DUE DATE 7
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`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.
`
`6
`
`
`
`IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................... April 18, 2019
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`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
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`DUE DATE 2 ............................................................................. July 11, 2019
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`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ August 12, 2019
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`Patent owner’s sur-reply to reply
`
`Patent owner’s reply to opposition to motion to amend
`
`DUE DATE 4 ................................................................... September 11, 2019
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`Petitioner’s sur-reply to reply to opposition to motion to amend
`
`Motion to exclude evidence
`
`Request for oral argument (may not be extended by stipulation)
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`DUE DATE 5 ................................................................... September 18, 2019
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`Opposition to motion to exclude
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`DUE DATE 6 ................................................................... September 25, 2019
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`Reply to opposition to motion to exclude
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`Request for prehearing conference
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`DUE DATE 7 ........................................................................ October 9, 2019
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`Oral argument (if requested)
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`
`
`7
`
`
`
`IPR2018-01261 (Patent 9,535,490 B2)
`IPR2018-01293 (Patent 9,535,490 B2)
`IPR2018-01295 (Patent 9,535,490 B2)
`IPR2018-01344 (Patent 9,535,490 B2)
`IPR2018-01346 (Patent 9,535,490 B2)
`
`PETITIONER:
`
`Jason Kipnis
`Jason.kipnis@wilmerhale.com
`
`David Cavanaugh
`David.cavanaugh@wilmerhale.com
`
`Joseph Haag
`Joseph.haag@wilmerhale.com
`
`PATENT OWNER:
`
`David Maiorana
`dmaiorana@jonesday.com
`
`Matthew Johnson
`mwjohnson@jonesday.com
`
`Joseph Sauer
`jmsauer@jonesday.com
`
`Richard Graham
`ragraham@jonesday.com
`
`Joshua Nightingale
`jrnightingale@jonesday.com
`
`David Cochran
`dcochran@jonesday.com
`
`
`8
`
`