Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
` March 7, 2019
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01496
`Patent 8,494,346 B2
`____________
`
`
`Before J. JOHN LEE, JESSICA C. KAISER, and JOHN R. KENNY,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`Paper 13
` March 7, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01496
`Patent 8,494,346 B2
`____________
`
`
`Before J. JOHN LEE, JESSICA C. KAISER, and JOHN R. KENNY,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`IPR2018-01496
`Patent 8,494,346 B2
`
`A. GENERAL INSTRUCTIONS
`
`1. Initial Conference Call
`
`The parties are directed to contact the Board within one month of the
`
`date of this decision if there is a need to discuss proposed changes to this
`
`Scheduling Order (i.e., regarding DUE DATES 6 and 7) or any proposed
`
`motions not authorized already by our Rules or by this Scheduling Order,
`
`which the parties anticipate filing during the trial. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (setting
`
`forth guidance in preparing for the initial conference call). A request for an
`
`initial conference call must include a list of proposed motions, if any, to be
`
`discussed during the call.
`
`2. Protective Order
`
`No protective order applies 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 presented as an exhibit to the
`
`motion. The parties may adopt the Board’s default protective order if they
`
`conclude that a protective order is necessary. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 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 the
`
`proceedings. Redactions to documents filed in this proceeding should be
`
`limited to the minimum amount necessary to protect confidential
`
`
`
`IPR2018-01496
`Patent 8,494,346 B2
`
`information, and that the thrust of the underlying argument or evidence must
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`be clearly discernible to the public from the redacted versions. Information
`
`subject to a protective order may become public if identified in a final
`
`written decision in this proceeding, and a motion to expunge the information
`
`will not necessarily prevail over the public interest in maintaining a
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`complete and understandable file history. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. at 48,761; 37 C.F.R. § 42.56.
`
`3. Motion to Amend
`
`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. See 37 C.F.R. § 42.121(a). Patent Owner should
`
`arrange for a conference call with the panel at least 10 business days before
`
`DUE DATE 1 in order to satisfy the requirement for a conference.
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`4. Discovery Disputes
`
`The Board encourages the parties to resolve disputes relating to
`
`discovery on their own and in accordance with the precepts set forth in
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`37 C.F.R. § 42.1(b). To the extent that a dispute arises between the parties
`
`relating to discovery, the parties shall meet and confer to resolve such a
`
`dispute before contacting the Board. If attempts to resolve the dispute fail,
`
`either party may request a conference call with the Board.
`
`In any request for a conference call with the Board to resolve a
`
`discovery dispute, the requesting party shall: (a) certify that it has conferred
`
`with the other party in an effort to resolve the dispute; (b) identify with
`
`specificity the issues for which agreement has not been reached; (c) identify
`
`the precise relief to be sought; and (d) propose specific dates and times at
`
`which both parties are available for the conference call.
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`
`
`IPR2018-01496
`Patent 8,494,346 B2
`
`
`5. Depositions
`
`The Testimony Guidelines appended to the Office Patent Trial
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`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.
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`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. 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
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`submitting another copy of the same transcript.
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`6. Cross-Examination
`
`Except as the parties might otherwise agree, for each due date—
`
`1.
`
`Cross-examination takes place after any supplemental evidence
`
`is due. 37 C.F.R. § 42.53(d)(2).
`
`2.
`
`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 shall 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
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`
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`IPR2018-01496
`Patent 8,494,346 B2
`
`notifies the parties otherwise, oral argument, if requested, will be held at the
`
`USPTO headquarters in Alexandria.
`
`The parties may request that the oral argument instead be held at the
`
`Denver, Colorado, 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.
`
`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
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`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, nor to DUE DATE 4 with respect to the requirement for
`
`requesting oral argument. If either party anticipates the need to alter DUE
`
`DATE 7, the parties must schedule a conference call with the panel
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`immediately upon identifying any conflict or potential conflict with DUE
`
`DATE 7.
`
`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
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`
`
`IPR2018-01496
`Patent 8,494,346 B2
`
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony.
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`1. DUE DATE 1
`
`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
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`call with the Board. Patent Owner is cautioned that any arguments not
`
`raised in the response may be deemed waived.
`
`b.
`
`A motion to amend the patent (37 C.F.R. § 42.121). The parties
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`are directed to the Board’s Guidance on 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).
`
`2. DUE DATE 2
`
`Petitioner may file—
`
`a.
`
`b.
`
`A reply to the Patent Owner’s response.
`
`An opposition to the motion to amend, if Patent Owner filed
`
`such a motion.
`
`3. DUE DATE 3
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`Patent Owner may file—
`
`a.
`
`b.
`
`A sur-reply to Petitioner’s reply.
`
`A reply to the opposition to the motion to amend, if Petitioner
`
`filed such an opposition.
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`4. DUE DATE 4
`
`a.
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`Petitioner may file a sur-reply to Patent Owner’s reply to the
`
`opposition to the motion to amend, if such reply was filed.
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`
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`IPR2018-01496
`Patent 8,494,346 B2
`
`
`b.
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`Either party may file a motion to exclude evidence (37 C.F.R
`
`§ 42.64(c)), and a 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, if
`
`the opposing party filed such a motion.
`
`6. DUE DATE 6
`
`a.
`
`Either party may file a reply to an opposition to a motion to
`
`exclude evidence, if the opposing party filed such an opposition.
`
`b.
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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
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`date. The Board will issue an order setting the start time of the hearing and
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`the procedures that will govern the parties’ arguments.
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`
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`IPR2018-01496
`Patent 8,494,346 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .............................................................................. June 7, 2019
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`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................... September 9, 2019
`
`Petitioner’s reply to Patent Owner’s response to petition
`
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ........................................................................ October 7, 2019
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`Patent Owner’s sur-reply to Petitioner’s reply
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`Patent Owner’s reply to opposition to motion to amend
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`DUE DATE 4 .................................................................... November 7, 2019
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`Petitioner’s sur-reply to reply to opposition to motion to amend
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`Motion to exclude evidence
`
`Request for oral argument
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`DUE DATE 5 .................................................................. November 14, 2019
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`Opposition to motion to exclude
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`DUE DATE 6 .................................................................. November 21, 2019
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`Reply to opposition to motion to exclude
`
`Request for prehearing conference
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`DUE DATE 7 ................................................................... December 18, 2019
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`Oral argument (if requested)
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`
`
`IPR2018-01496
`Patent 8,494,346 B2
`
`PETITIONER:
`
`Colin B. Heideman
`Joseph R. Re
`Christie R.W. Matthaei
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2cbh@knobbe.com
`2jrr@knobbe.com
`2crw@knobbe.com
`
`
`PATENT OWNER:
`
`Bryan E. Wilson
`Adam C. Underwood
`CAREY RODRIGUEZ MILIAN GONYA, LLP
`bwilson@careyrodriguez.com
`aunderwood@careyrodriguez.com
`
`
`
`
`
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