Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 22
`Entered: May 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`TELA INNOVATIONS, INC.,
`Patent Owner.
`
`IPR2019-01636 (Patent 10,141,334 B2)
` IPR2019-01637 (Patent 10,141,335 B2)1
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R § 42.5
`
`1 The parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`On April 29, 2020, Petitioner contacted the Board via email to request
`
`changes to the scheduling orders entered in the above-captioned cases, to
`
`better align them with the combined scheduling orders in related cases
`
`IPR2019-01520, IPR2019-01521, and IPR2019-01522 (the “Related
`
`Cases”). See Exhibit A. Petitioner specifically requested that Due Dates 1–
`
`8 of the above-captioned cases be adjusted to coincide with the
`
`corresponding Due Dates in the Related Cases, and that the hearing take
`
`place in the Alexandria, Virginia USPTO Regional Office. Id. Petitioner
`
`attached a table proposing a consolidated schedule in the above-captioned
`
`cases and the Related Cases. See Exhibit B. Petitioner also represented that
`
`Patent Owner and Petitioner have conferred and that Patent Owner consents
`
`to Petitioner’s request. See Exhibit A.
`
`We have reviewed Petitioner’s proposal, and note that the parties are
`
`in agreement as to the proposed revised schedule. We seek to “secure the
`
`just, speedy, and inexpensive resolution of every proceeding.” See 37
`
`C.F.R. § 42.1(b). Because we agree with the parties that the proposed
`
`schedule is aligned with these objectives, and does not unduly burden either
`
`party or the Board, the Board finds it appropriate to enter the scheduling
`
`order below to align the schedules in all five proceedings.
`
`Accordingly, the Board herein modifies the schedules of IPR2019-
`
`01636 and IPR2019-01637 to align with the schedules in the Related Cases.
`
`The alignment of the schedules will allow for procedural efficiencies in this
`
`group of cases involving related patents and the same parties. The alignment
`
`of the schedules will also maximize efficiencies and allow the Board to
`
`evaluate any interrelated arguments in a contemporaneous, rather than
`
`staggered, manner. Accordingly, the Board determines that the changes
`
`2
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`detailed below shall be made to the scheduling orders in each of the above-
`
`captioned proceedings.
`
`In response to the parties’ question regarding a conference call, the
`
`Board determines that no Initial Conference Call is necessary to discuss the
`
`requested changes.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that the Scheduling Order below shall serve as the
`
`scheduling order in each of the above-captioned cases.
`
`
`
`
`
`3
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 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 Consolidated Trial Practice Guide (“Consolidated
`
`Practice Guide”)2 at 9–10, 65 (guidance in preparing for a conference call);
`
`see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). 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
`
`Consolidated Practice Guide at 107–122 (App. B, Protective Order
`
`Guidelines and 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.
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`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 Consolidated
`
`Practice Guide at 21–22.
`
`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 Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines)
`
`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:
`
`5
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 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.
`
`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. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”); see also
`
`Consolidated Practice Guide at 67. 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
`
`6
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb.
`
`25, 2019) (precedential).
`
`At DUE DATE 3, Patent Owner has the option to file a reply to the
`
`opposition to the motion to amend and preliminary guidance, or a revised
`
`motion to amend. See MTA Pilot Program Notice at 9500–01. Patent
`
`Owner may elect to file a revised motion to amend even if Patent Owner did
`
`not request to receive preliminary guidance on its motion to amend. 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 at 9501, App. 1B.
`
`As also discussed in the MTA Pilot Program Notice, if the Board
`
`issues preliminary guidance on the motion to amend, and Patent Owner files
`
`neither a reply to the opposition to the motion to amend nor 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 Petitioner’s reply. See
`
`MTA Pilot Program Notice at 9502. No new evidence may accompany the
`
`reply or the sur-reply in this situation.
`
`7
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`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 Alexandria, Virginia, USPTO Regional Office.
`
`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.
`
`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.
`
`8
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`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, 5, and 6, as well as the portion of DUE DATE 2 related to
`
`Petitioner’s reply (earlier or later, but no later than DUE DATE 3 for Patent
`
`Owner’s sur-reply) and the portion of DUE DATE 3 related to Patent
`
`Owner’s sur-reply (earlier or later, but no later than DUE DATE 7). The
`
`parties may not stipulate to a different date for the portion of DUE DATE 2
`
`related to Petitioner’s opposition to a motion to amend, or for the portion of
`
`DUE DATE 3 related to Patent Owner’s reply to an opposition to a motion
`
`to amend (or Patent Owner’s revised motion to amend) without prior
`
`authorization from the Board. 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—
`
`9
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`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/or preliminary
`
`guidance (if provided); or
`
`b. a revised motion to amend.
`
`NOTE: If Patent Owner files neither of the above papers (a reply to
`
`the opposition or a revised motion to amend), and the Board has issued
`
`preliminary guidance, Petitioner may file a reply to the preliminary
`
`guidance, no later than three (3) weeks after DUE DATE 3. Patent Owner
`
`may file a sur-reply to Petitioner’s reply to the preliminary guidance no later
`
`than three (3) weeks after Petitioner’s reply.
`
`4.
`
`DUE DATE 4
`
`Either party may file a request for oral argument (may not be extended
`
`by stipulation).
`
`10
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`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.
`
`11
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ June 26, 2020
`
`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ August 26, 2020
`
`Petitioner’s reply to Patent Owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ October 7, 2020
`
`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)3
`
`DUE DATE 4 ...................................................................... October 28, 2020
`
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 .................................................................. November 18, 2020
`
`Petitioner’s sur-reply to reply to opposition to motion to amend
`
`Motion to exclude evidence
`
`DUE DATE 6 .................................................................. November 25, 2020
`
`Opposition to motion to exclude
`
`Request for prehearing conference
`
`DUE DATE 7 ..................................................................... December 2, 2020
`
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ..................................................................... December 9, 2020
`
`Oral argument (if requested)
`
`3 If Patent Owner files neither a reply to Petitioner’s opposition to the MTA
`nor a revised MTA, the parties are directed to Section B(3) above.
`
`12
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`EXHIBIT A
`
`From: Nguyen, Bao <bnguyen@kirkland.com>
`Sent: Wednesday, April 29, 2020 9:29 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Leinberg, Gunnar <leinberg@pepperlaw.com>; Zappia, Andrew P.
`<zappiaa@pepperlaw.com>; Smith, Bryan C. <smithbc@pepperlaw.com>; Arovas, Greg
`<garovas@kirkland.com>; Friedman, Todd M. <tfriedman@kirkland.com>; Mizzo, F.
`Christopher <chris.mizzo@kirkland.com>; Gallo, Nicholas J. <gallon@pepperlaw.com>;
`McCarthy, Alison L. <mccartha@pepperlaw.com>
`Subject: IPR2019-01636 ('334 patent) and IPR2019-01637 ('335 patent)
`
`Trials,
`
`Petitioner writes to request changes to the Scheduling Orders of IPR2019-01636 and -01637
`(directed to the ‘334 and ‘335 patents) to better align them with the combined Scheduling Order
`that issued in IPR2019-01520, -01521, and -01522 (all directed to the ‘523 patent). The five
`proceedings at issue challenge related patents and the proposed changes would allow for a
`consolidated oral argument (if requested) that saves judicial resources. More specifically,
`Petitioner requests that the Due Dates 1-8 of the ‘334 and ‘335 proceedings be adjusted to
`coincide with the corresponding Due Dates of the ‘523 proceedings (as shown in red in the
`attached), and that the oral argument for the ‘334 and ‘335 proceedings be held at the Alexandria,
`Virginia USPTO Regional Office (instead of Denver) where the oral argument for the ‘523
`proceedings are scheduled to be held as well. Petitioner and Patent Owner have met and conferred
`and Patent Owner consents to Petitioner’s request.
`
`The parties have also agreed to extend Due Date 1 in the ‘523 proceedings from June 3, 2020 to
`June 26, 2020, as also shown in the attached, and have filed stipulations to that effect.
`
`The parties also seek guidance from the Board as to whether an Initial Conference Call is
`necessary to discuss the requested changes (the Board previously found that such a call was not
`necessary when the Board granted the parties’ request to consolidate the schedules of IPR2019-
`01228 and -01255 directed to the ‘966 and ‘012 patents).
`
`Respectfully,
`Bao
`
`Bao Nguyen
`(Counsel for Petitioner)
`Kirkland & Ellis LLP
`555 California Street, SF
`(415) 439-1425
`
`The information contained in this communication is confidential, may be attorney-client privileged, may
`constitute inside information, and is intended only for the use of the addressee. It is the property of Kirkland
`& Ellis LLP or Kirkland & Ellis International LLP. Unauthorized use, disclosure or copying of this
`communication or any part thereof is strictly prohibited and may be unlawful. If you have received this
`communication in error, please notify us immediately by return email or by email to
`postmaster@kirkland.com, and destroy this communication and all copies thereof, including all attachments.
`
`13
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`EXHIBIT B
`
`14
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`FOR PETITIONER:
`
`Todd Friedman
`Todd.friedman@kirkland.com
`
`Gregory Arovas
`Greg.arovas@kirkland.com
`
`F. Christopher Mizzo
`Chris.mizzo@kirkland.com
`
`Bao Nguyen
`bnguyen@kirkland.com
`
`FOR PATENT OWNER:
`
`Gunnar Leinberg
`leinberg@pepperlaw.com
`
`Bryan Smith
`smithbc@pepperlaw.com
`
`Nicholas Gallo
`gallon@pepperlaw.com
`
`15
`
`