Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 17
`Date: December 5, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHEGG, INC., MATCH GROUP, LLC, AND RPX CORPORATION,
`Petitioner,
`
`v.
`
`NETSOC, LLC,
`Patent Owner.
`____________
`
`IPR2019-01165 (Patent 9,978,107 B2)
` IPR2019-01171 (Patent 9,978,107 B2)1
`____________
`
`
`
`
`Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to issue
`one Order to be docketed in each case. The parties may not use this caption for any
`subsequent papers without prior Board authorization.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 17
`Date: December 5, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CHEGG, INC., MATCH GROUP, LLC, AND RPX CORPORATION,
`Petitioner,
`
`v.
`
`NETSOC, LLC,
`Patent Owner.
`____________
`
`IPR2019-01165 (Patent 9,978,107 B2)
` IPR2019-01171 (Patent 9,978,107 B2)1
`____________
`
`
`
`
`Before KALYAN K. DESHPANDE, SHEILA F. McSHANE, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to issue
`one Order to be docketed in each case. The parties may not use this caption for any
`subsequent papers without prior Board authorization.
`
`
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`A. GENERAL INSTRUCTIONS
`
`1. INITIAL CONFERENCE CALL
`
`The parties are directed to contact the Board within a month of this
`
`Scheduling 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 shall include a list of
`
`proposed motions, if any, to be discussed during the call.
`
`2. STANDING PROCEDURE FOR REQUESTS FOR CONFERENCE
`CALLS AND EMAIL COMMUNICATIONS TO THE BOARD
`
`The following procedures apply to all requests for a conference call with the
`
`Board and all email communications to the Board:
`
`a. The parties may request a conference call by jointly contacting the Board
`
`at the email address or telephone number listed above the caption of this
`
`Order. Requests via email are expected and preferred; requests via
`
`telephone should be reserved for time-critical circumstances.
`
`b. Before requesting a conference call or sending any email communication
`
`to the Board, the parties must confer in an effort to resolve any issue to be
`
`presented to the Board.
`
`c. Any email communication to the Board must copy all counsel.
`
`d. Any request for a conference call or other email communication to the
`
`Board must identify the issue(s) presented, state that the parties conferred in
`
`good faith to try to resolve the issue, identify the precise relief sought by
`
`each party, and state whether the other party opposes the relief sought.
`
`e. The email may include a brief discussion of the background that led to
`
`the issue(s), but must not include arguments.
`
`2
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`f. Any request for a conference call must include a list of dates and times
`
`when both parties are available for the call.
`
`3. 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 Patent Trial and Appeal Board
`
`Consolidated Trial Practice Guide November 2019, 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
`
`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 at 48,761.
`
`4. 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
`
`3
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`contacting the Board. If attempts to resolve the dispute fail, a party may request a
`
`conference call with the Board.
`
`5. 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.
`
`6. 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.
`
`7. 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 before
`
`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 Patent Owner elects to request
`
`4
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`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., IPR2018-
`
`01129 Paper 15 (PTAB Feb. 25, 2019) (Order) (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.
`
`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 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 Petitioner’s reply and must be filed no later than
`
`5
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`three (3) weeks after Petitioner’s reply. No new evidence may accompany the
`
`reply or the sur-reply in this situation.
`
`8. 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.
`
`
`
`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 this 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.
`
`6
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`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). 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; and
`
`b. a motion to amend the patent (37 C.F.R. § 42.121).
`
`2. DUE DATE 2
`
`Petitioner may file a reply to 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.
`
`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.
`
`7
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`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 before the argument, the Board will issue an order
`
`setting the start time of the hearing and the procedures that will govern the parties’
`
`arguments.
`
`8
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .............................................................February 28, 2020
`
`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... May 22, 2020
`
`Petitioner’s reply to Patent Owner’s response to the petition
`
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ..................................................................... July 6, 2020
`
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the
`petition
`
`Patent Owner’s reply to Petitioner’s opposition to the motion to
`amend OR Patent Owner’s revised motion to amend
`
`DUE DATE 4 ................................................................... July 27, 2020
`
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ............................................................... August 17, 2020
`
`Petitioner’s sur-reply to the opposition to the motion to amend
`
`Motion to exclude evidence
`
`DUE DATE 6 ............................................................... August 24, 2020
`
`Opposition to motion to exclude
`
`Request for pre-hearing conference
`
`DUE DATE 7 ............................................................... August 31, 2020
`
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ............................................................ September 9, 2020
`
`Oral argument (if requested)
`
`
`
`
`
`9
`
`
`
`IPR2019-01165 (Patent 9,978,107 B2)
`IPR2019-01171 (Patent 9,978,107 B2)
`
`PETITIONER:
`
`Nathan J. Rees
`R. Ross Viguet
`Robert L. Greeson
`Erik Janitens
`NORTON ROSE FULBRIGHT US LLP
`nate.rees@nortonrosefulbright.com
`ross.viguet@nortonrosefulbright.com
`robert.greeson@nortonrosefulbright.com
`erik.janitens@nortonrosefulbright.com
`RPX_IPR_Service@nortonrosefulbright.com
`
`
`
`PATENT OWNER:
`
`William P. Ramey, III
`Melissa D. Schwaller
`RAMEY & SCHWALLER, LLP
`wramey@rameyfirm.com
`mschwaller@rameyfirm.com
`
`
`
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
