`571.272.7822
`
`
`Paper 8
`Entered: March 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. AND TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01666
`Patent 9,532,330 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, MICHAEL W. KIM, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
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`Case IPR2018-01666
`Patent 9,532,330
`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.
`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 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 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 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
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`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.
`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 impedes, delays, or frustrates the fair
`examination of a witness.
`5.
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`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.
`6. 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. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent Owner
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`Patent 9,532,330
`should request a conference call with the Board no later than two weeks prior to
`DUE DATE 1. See Section B below regarding DUE DATES.
`Patent Owner has the option to receive preliminary guidance from the Board
`on its motion to amend. See Notice Regarding a New Pilot Program Concerning
`Motion to Amend Practice and Procedures in Trial Proceedings under the America
`Invents Act before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497 (Mar. 15,
`2019) (“MTA Pilot Program Notice”). If Patent Owner elects to request
`preliminary guidance from the Board on its motion, it must do so in its motion to
`amend filed on DUE DATE 1.
`Any motion to amend and briefing related to such a motion shall generally
`follow the practices and procedures described in MTA Pilot Program Notice unless
`otherwise ordered by the Board in this proceeding. The parties are further directed
`to the Board’s Guidance on Motions to Amend in view of Aqua Products
`(https://go.usa.gov/xU6YV), and Lectrosonics, Inc. v. Zaxcom, Inc., Case
`IPR2018-01129 (Paper 15) (PTAB Feb. 25, 2019) (precedential).
`As indicated in the MTA Pilot Program Notice, Patent Owner has the option
`at DUE DATE 3 to file a revised motion to amend (instead of a reply, as noted
`above) after receiving petitioner’s opposition to the original motion to amend
`and/or after receiving the Board’s preliminary guidance (if requested). A revised
`motion to amend must provide amendments, arguments, and/or evidence in a
`manner that is responsive to issues raised in the preliminary guidance and/or
`petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board shall enter a
`revised scheduling order setting the briefing schedule for that revised motion and
`adjusting other due dates as needed. See MTA Pilot Program Notice, App’x B 1B.
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`As also discussed in the MTA Pilot Program Notice, if the Board issues
`preliminary guidance on the motion to amend and the Patent Owner does not file
`either a reply to the opposition to the motion to amend or a revised motion to
`amend at Due Date 3, Petitioner may file a reply to the Board’s preliminary
`guidance, no later than three (3) weeks after Due Date 3. The reply may only
`respond to the preliminary guidance. Patent Owner may file a sur-reply in
`response to Petitioner’s reply to the Board’s preliminary guidance. The sur-reply
`may only respond to arguments made in the reply and must be filed no later than
`three (3) weeks after the Petitioner’s reply. No new evidence may accompany the
`reply or the sur-reply in this situation.
`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 notifies the parties otherwise, oral argument, if requested,
`will be held at the USPTO headquarters in Alexandria.
`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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`B. DUE DATES
`This Order sets due dates for the parties to take action after institution of the
`proceeding. The parties may stipulate different dates for DUE DATES 1 through
`3, 5, and 6 (earlier or later, but no later than DUE DATE 7). In stipulating to move
`any due dates in the scheduling order, the parties must be cognizant that the Board
`requires four weeks after the filing of an opposition to the motion to amend (or the
`due date for the opposition, if none is filed) for the Board to issue its preliminary
`guidance, if requested by Patent Owner. A notice of the stipulation, specifically
`identifying the changed due dates, must be promptly filed. The parties may not
`stipulate an extension of DUE DATES 4, 7, and 8.
`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 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
`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 for patentability not
`raised in the response may be deemed waived.
`b. A motion to amend the patent (37 C.F.R. § 42.121).
`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.
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`Patent Owner may also file either:
`a. a reply to the opposition to the motion to amend and preliminary guidance
`(if provided); or
`b. a revised motion to amend.
`4. DUE DATE 4
`Either party may file a request for oral argument (may not be extended by
`stipulation).
`5. DUE DATE 5
`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)).
`6. DUE DATE 6
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`8. DUE DATE 8
`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.
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`DUE DATE APPENDIX
`
`DUE DATE 1 ......................................................... June 18, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ................................................ September 10, 2019
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................... October 22, 2019
`Patent Owner’s sur-reply to reply
`Patent Owner’s reply to opposition to motion to amend
`(or Patent Owner’s revised motion to amend)
`DUE DATE 4 ................................................. November 12, 2019
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ................................................... December 3, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
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`DUE DATE 6 ................................................. December 10, 2019
`Opposition to motion to exclude
`Request for prehearing conference
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`DUE DATE 7 ................................................. December 17, 2019
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ...................................................... January 6, 2020
`Oral argument (if requested)
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`Case IPR2018-01666
`Patent 9,532,330
`
`PETITIONER:
`
`J. Andrew Lowes
`Clint Wilkins
`Adam Fowles
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`adam.fowles.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Byron L. Pickard
`Daniel S. Block
`Tyler J. Dutton
`STERNE,KESSLER,GOLDSTEIN & FOX P.L.L.C.
`bpickard-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`tdutton-ptab@sternekessler.com
`
`James R. Hietala
`Russell Rigby
`Tim R. Seely
`INTELLECTUAL VENTURES
`jhietala@intven.com
`rrigby@intven.com
`tims@intven.com
`
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