Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 10
`Entered: October 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVEPOINT, INC.,
`Petitioner,
`
`v.
`
`ONETRUST, LLC,
`Patent Owner.
`____________
`
`
`
`Case PGR2018-00056
`Patent 9,691,090 B1
`____________
`
`
`Before BART A. GERSTENBLITH, CARL M. DEFRANCO, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`This Order sets a schedule for trial, including due dates for the parties
`
`to take action upon entry of the Decision to Institute. See Appendix. The
`
`trial will be administered in a just, speedy, and inexpensive manner such that
`
`pendency before the Board is no more than one year after institution. 37
`
`C.F.R. §§ 42.1(b) and 42.200(c).
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 10
`Entered: October 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVEPOINT, INC.,
`Petitioner,
`
`v.
`
`ONETRUST, LLC,
`Patent Owner.
`____________
`
`
`
`Case PGR2018-00056
`Patent 9,691,090 B1
`____________
`
`
`Before BART A. GERSTENBLITH, CARL M. DEFRANCO, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`This Order sets a schedule for trial, including due dates for the parties
`
`to take action upon entry of the Decision to Institute. See Appendix. The
`
`trial will be administered in a just, speedy, and inexpensive manner such that
`
`pendency before the Board is no more than one year after institution. 37
`
`C.F.R. §§ 42.1(b) and 42.200(c).
`
`
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`
`A. GENERAL INSTRUCTIONS
`
`1. Initial Conference Call
`
`An initial conference call will be scheduled only upon request by
`
`either party within thirty (30) days of this Order. To request a conference
`
`call, the parties should consult with each other and submit a list of proposed
`
`dates and times for the call. If an initial conference call is scheduled, the
`
`parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,765–66 (Aug. 14, 2012) (“Trial Practice Guide”), for guidance in
`
`preparing for the call, and should be prepared to discuss any proposed
`
`changes to the schedule and any motions the parties anticipate filing during
`
`the trial.
`
`2. Meet and Confer Requirement
`
`The parties are encouraged to engage in meaningful discussions
`
`before seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for
`
`relief with the Board. At a minimum, before requesting authorization, the
`
`parties shall confer with each other in a good-faith effort to resolve the issue
`
`for which relief is to be sought. Only if the parties cannot resolve the issue
`
`on their own may a party request a conference call with the Board in order to
`
`seek authorization to move for relief. In any request for a conference call
`
`with the Board, the requesting party shall: (1) certify that it has in good-
`
`faith conferred (or attempted to confer, if the request is a time-sensitive
`
`emergency) with the other party in an effort to resolve the issue; (2) identify
`
`with specificity, but without argument, the issue for which agreement has
`
`not been reached; (3) state the precise relief to be sought; and (4) propose
`
`specific dates and times for which both parties are available for the
`
`conference call.
`
`2
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`
`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 should be presented as an exhibit
`
`to 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 Default Protective Order, Trial Practice Guide, 77 Fed. Reg. at 48,756
`
`(App. B). 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 Trial Practice
`
`Guide, 77 Fed. Reg. at 48,761.
`
`4. Cross-Examination Testimony
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Trial Practice Guide, 77 Fed. Reg. at 48,772 (App. D), apply to this
`
`proceeding. The Board may impose an appropriate sanction on any party
`
`3
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`who fails to adhere to the Testimony Guidelines, including reasonable
`
`expenses and attorney fees incurred by a party affected by another party’s
`
`misconduct. 37 C.F.R. § 42.12.
`
`Except as the parties might otherwise agree, for each due date—
`
`(1) cross-examination of a witness begins after any supplemental evidence is
`
`due; and (2) cross-examination ends no later than a week before the filing
`
`date for any paper in which the cross-examination testimony is expected to
`
`be used. 37 C.F.R. § 42.53(d)(2). Should a party submit a deposition
`
`transcript of a witness’s testimony as an exhibit in this proceeding, the
`
`submitting party shall file the full transcript of the testimony 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. 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 Appendix hereto.
`
`Unless the Board notifies the parties otherwise, oral argument, if
`
`requested, will be held at the United States Patent and Trademark Office
`
`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. The parties should note that
`
`4
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`the earlier a request for accommodation is made, the more likely the Board
`
`will be able to accommodate additional individuals.
`
`B. DUE DATES
`
`The Appendix specifies due dates for the parties to take action in this
`
`proceeding. The parties may stipulate to different dates for DUE DATES 1
`
`through 5 (earlier or later, but no later than DUE DATE 6). A notice of any
`
`stipulation, specifically identifying the changed due dates, must be filed
`
`promptly with the Board. 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.
`
`In stipulating to 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 (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
`
`The patent owner may file—
`
`a. A response to the petition (37 C.F.R. § 42.220), and
`
`b. A motion to amend the patent (37 C.F.R. § 42.221).
`
`The patent owner must file any such response or motion to amend by
`
`
`
`
`
`
`
`
`
`DUE DATE 1. If the patent owner elects not to file anything, the patent
`
`owner must arrange a conference call with the parties and the Board. The
`
`patent owner is cautioned that any arguments for patentability not raised
`
`and fully briefed in the response may be deemed waived.
`
`5
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`
`The patent owner may file a motion to amend without prior
`
`authorization from the Board. Nevertheless, the patent owner must confer
`
`with the Board before filing such a motion. 37 C.F.R. § 42.221(a). To
`
`satisfy this requirement, the 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, which can be found at
`
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions
`
`_to_amend_11_2017.pdf. In addition, the parties are directed to the Board’s
`
`decision in Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-
`
`00082 (PTAB April 25, 2018) (Paper 13) (informative), which provides
`
`guidance on motions to amend.
`
`2. Due Date 2
`
`
`
`The petitioner must file any reply to the patent owner’s response and
`
`opposition to the motion to amend by DUE DATE 2.
`
`3. Due Date 3
`
`
`
`The patent owner must file any sur-reply to the petitioner’s reply and
`
`any reply to the petitioner’s opposition to any motion to amend by DUE
`
`DATE 3.
`
`4. Due Date 4
`
`The petitioner must file any sur-reply to the patent owner’s reply to
`
`the opposition to the motion to amend, and each party must file any motion
`
`to exclude evidence (37 C.F.R § 42.64(c)) and any request for oral argument
`
`(37 C.F.R. § 42.70(a)) by DUE DATE 4.
`
`6
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`
`5. Due Date 5
`
`
`
`Each party must file any opposition to a motion to exclude evidence
`
`by DUE DATE 5.
`
`6. Due Date 6
`
`
`
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`
`
`Either party may file a request for a pre-hearing conference.
`
`7. Due Date 7
`
`If requested by either party, an oral hearing will be held on DUE
`
`DATE 7.
`
`
`
`
`
`7
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`
`APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ....................................................................... January 11, 2019
`
`- Patent owner’s response to the petition
`
`- Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................... April 11, 2019
`
`- Petitioner’s reply to patent owner’s response to the petition
`
`- Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................... May 3, 2019
`
`- Patent owner’s sur-reply to petitioner’s reply
`
`- Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ May 31, 2019
`
`- Petitioner’s sur-reply to patent owner’s reply to opposition of
`motion to amend
`
`
`
`- Motion to exclude evidence
`
`- Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 .............................................................................. June 7, 2019
`
`- Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ June 14, 2019
`
`- Reply to opposition to motion to exclude
`
`- Request for pre-hearing conference
`
`DUE DATE 7 ............................................................................ June 24, 2019
`
`- Oral argument (if requested)
`
`8
`
`
`
`PGR2018-00056
`Patent 9,691,090 B1B2
`
`
`FOR PETITIONER:
`
`Nathan A. Evans
`Michele Mayberry
`WOODS ROGERS PLC
`nevans@woodsrogers.com
`
`
`
`
`FOR PATENT OWNER:
`
`David A. Reed
`Michael T. Morlock
`KILPATRICK TOWNSEND & STOCKTON LLP
`dreed@kilpatricktownsend.com
`mmorlock@kilpatricktownsend.com
`
`
`
`Scott E. Brient
`BRIENT IP LAW, LLC
`sbrient@brientip.com
`
`
`
`David K. Dabbiere
`ONETRUST, LLC
`ddabbiere@onetrust.com
`
`
`9
`
`
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
