Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 9
`August 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRIPLE PLUS LTD.,
`Petitioner,
`v.
`MORDECHAI BEN OLD,
`Patent Owner.
`____________
`
`Case PGR2018-00038
`Patent 9,671,031 B2
`____________
`
`
`Before BART A. GERSTENBLITH, GEORGE R. HOSKINS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 9
`August 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRIPLE PLUS LTD.,
`Petitioner,
`v.
`MORDECHAI BEN OLD,
`Patent Owner.
`____________
`
`Case PGR2018-00038
`Patent 9,671,031 B2
`____________
`
`
`Before BART A. GERSTENBLITH, GEORGE R. HOSKINS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`PGR2018-00038
`Patent 9,671,031 B2
`
`
`I.
`GENERAL INSTRUCTIONS
`
`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.
`
`
`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
`
`
`
`PGR2018-00038
`Patent 9,671,031 B2
`
`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 48,761.
`
` 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.
`
`
`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.
`
`
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`1. Cross-examination ordinarily takes place after any
`supplemental evidence is due. 37 C.F.R. § 42.53(d)(2).
`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.
`
`3
`
`
`
`PGR2018-00038
`Patent 9,671,031 B2
`
`
`
`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, Virginia.
`Seating in the Board’s hearing rooms is 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.
`
`II. DUE DATES
`This Scheduling 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). Stipulating to a different DUE DATE 4, however, does not
`modify the deadline, set in this Order, for requesting oral argument. That
`deadline may not be modified by the parties. Additionally, the parties may
`not stipulate to an extension of DUE DATES 6 and 7. A notice of the
`stipulation, specifically identifying the changed due dates, must be promptly
`filed.
`
`In stipulating to 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
`
`4
`
`
`
`PGR2018-00038
`Patent 9,671,031 B2
`
`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.
`
` DUE DATE 1
`Patent Owner may file—
`1.
`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.
`
`A motion to amend the patent (37 C.F.R. § 42.121).
`2.
`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. The parties 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
`Technologies, Inc., Case IPR2018-00082 (PTAB April 25, 2018) (Paper 13)
`(providing information and guidance on motions to amend).
`
` DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
` DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`
`5
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`PGR2018-00038
`Patent 9,671,031 B2
`
`
`Patent Owner may file a reply to the opposition to the motion to
`amend.
`
` DUE DATE 4
`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)).
`Either party may file a request for oral argument.
`
` DUE DATE 5
`Either party may file an opposition to a motion to exclude evidence.
`
`
`DUE DATE 6
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`Either party may request that the Board hold a pre-hearing conference.
`
` DUE DATE 7
`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.
`
`
`
`6
`
`
`
`PGR2018-00038
`Patent 9,671,031 B2
`
`DUE DATE APPENDIX
`DUE DATE 1 .................................................................. November 20, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... February 12, 2019
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... March 12, 2019
`Patent owner’s sur-reply to reply
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................... April 18, 2019
`Petitioner’s sur-reply to patent owner’s reply to opposition to motion
`to amend
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................... April 30, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 .............................................................................. May 7, 2019
`Reply to opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 ............................................................................ May 21, 2019
`Oral argument (if requested)
`
`
`
`
`
`
`7
`
`
`
`PGR2018-00038
`Patent 9,671,031 B2
`
`For PETITIONER:
`
`Mark C. Johnson
`Brian M. Baker
`RENNER OTTO
`mjohnson@rennerotto.com
`bbaker@rennerotto.com
`
`
`For PATENT OWNER:
`
`Mordechai Ben Old
`meir@mdpatent.co.il
`
`
`
`
`8
`
`
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