`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 14
`Entered: April 30, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC. and AUGUST HOME, INC.,
`Petitioner,
`
`v.
`
`MARK W. KILBOURNE,
`Patent Owner.
`____________
`
`Case IPR2019-00233
`Patent 7,373,795 B2
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, RICHARD H. MARSCHALL, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2019-00233
`Patent 7,373,795 B2
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
`The parties are directed to contact the Board within one month of this
`Order if there is a need to discuss proposed changes to this 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 must 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
`
`2
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`IPR2019-00233
`Patent 7,373,795 B2
`
`clearly discernible from the redacted versions. We also advise the parties
`that information subject to a protective order will 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 the 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 and the
`other party in order to seek authorization to move for relief.
`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.
`4. Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the 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.
`
`3
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`IPR2019-00233
`Patent 7,373,795 B2
`
`
`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
`submitting another copy of the same transcript.
`5. Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`a. Cross-examination ordinarily takes place after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(2).
`b. 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 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. 9,497 (Mar. 15, 2019) (“MTA Pilot Program Notice”). If
`
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`IPR2019-00233
`Patent 7,373,795 B2
`
`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 the 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
`Petitioner’s opposition and/or the preliminary guidance.
`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 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary guidance on the motion to amend and 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
`
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`IPR2019-00233
`Patent 7,373,795 B2
`
`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 DUE DATE 4.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO 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 the proceeding. The parties may stipulate to different dates for DUE
`DATES 1–3, 5, and 6 (earlier or later, but no later than DUE DATE 7). In
`stipulating to move any due dates in this 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
`
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`IPR2019-00233
`Patent 7,373,795 B2
`
`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.
`Patent Owner may also file either:
`a. a reply to the opposition to the motion to amend and preliminary
`board guidance (if provided); or
`b. a revised motion to amend.
`
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`IPR2019-00233
`Patent 7,373,795 B2
`
`
`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.
`
`8
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`
`
`IPR2019-00233
`Patent 7,373,795 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .............................................................................. July 26, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... October 18, 2019
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... December 2, 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 .................................................................... December 23, 2019
`Request for oral argument (the parties may not stipulate to
`an extension of the due date for this request)
`
`DUE DATE 5 ........................................................................ January 10, 2020
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 ........................................................................ January 17, 2020
`Opposition to motion to exclude
`Request for Pre-hearing Conference
`
`DUE DATE 7 ........................................................................ January 24, 2020
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ................................ January 30, 2020 (1:30 pm Eastern Time)
`Oral argument (if requested)
`
`9
`
`
`
`IPR2019-00233
`Patent 7,373,795 B2
`
`PETITIONER:
`
`Joseph A. Hynds
`Jennifer P. Nock
`Eric D. Blatt
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`jhynds@rfem.com
`jnock@rfem.com
`eblatt@rfem.com
`
`
`PATENT OWNER:
`
`Robert J. McAughan, Jr.
`Christopher M. Lonvick
`McAUGHAN DEAVER PLLC
`bmcaughan@md-iplaw.com
`clonvick@md-iplaw.com
`
`
`10
`
`
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