Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Entered: May 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DEVELOPMENTAL TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`E.I. DU PONT DE NEMOURS AND COMPANY,
`Patent Owner.
`____________
`
`Case IPR2018-00102
`Patent 9,848,543 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`RYAN H. FLAX, 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. 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 42.100(c).
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Entered: May 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DEVELOPMENTAL TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`E.I. DU PONT DE NEMOURS AND COMPANY,
`Patent Owner.
`____________
`
`Case IPR2018-00102
`Patent 9,848,543 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`RYAN H. FLAX, 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. 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 42.100(c).
`
`
`
`
`
`IPR2018-00102
`Patent 9,848,543 B2
`
`
`I. GENERAL INSTRUCTIONS
`
`A. Initial Conference Call
`
`An initial conference call will be scheduled only if either party needs
`
`to discuss a proposed change to this order and/or a proposed motion not
`
`otherwise authorized by 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 and a list of proposed motions to be discussed during 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.
`
`B. Meet and Confer Requirement
`
`The parties must engage in meaningful discussions before seeking
`
`authorization under 37 C.F.R. § 42.20(b) to file a motion for relief with the
`
`Board. Only if the parties fail to resolve a dispute on their own may either
`
`party request a conference call with the Board to seek authorization to file a
`
`motion for relief. Any request for a conference call shall (a) certify that the
`
`parties have conferred in good-faith in an attempt to resolve the dispute on
`
`their own, (b) identify with specificity, but without argument, the nature of
`
`the dispute, (c) state the precise relief sought, and (d) propose specific dates
`
`and times when both parties are available for the requested conference call.
`
`C. 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.
`
`2
`
`
`
`IPR2018-00102
`Patent 9,848,543 B2
`
`See Default Protective Order, Trial Practice Guide, 77 Fed. Reg. at 48,756
`
`(App’x B). If the parties choose to propose a protective order deviating
`
`from the default protective order, they must submit (a) the proposed
`
`protective order jointly, along with a marked-up comparison of the proposed
`
`and default protective orders showing the differences between the two orders
`
`and (b) 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.
`
`D. Testimony
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Trial Practice Guide, 77 Fed. Reg. at 48,772 (App’x D), apply to this
`
`proceeding. The Board may impose an appropriate sanction on any party
`
`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.
`
`3
`
`
`
`IPR2018-00102
`Patent 9,848,543 B2
`
`
`Except as the parties might otherwise agree, for each due date—
`
`(a) cross-examination of a witness ordinarily begins after any supplemental
`
`evidence is due, and (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. 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.
`
`E. Patent Owner Response
`
`If Patent Owner elects not to file a response to the petition, Patent
`
`Owner must arrange a conference call with the Board. Under no
`
`circumstances is Patent Owner permitted to incorporate by reference
`
`arguments from other documents, such as its preliminary response, into its
`
`Patent Owner response. Patent Owner is cautioned that any arguments for
`
`patentability not raised and fully briefed in the Patent Owner response will
`
`be deemed waived.
`
`F. Motion to Amend
`
`Patent Owner may file a motion to amend without prior authorization
`
`from the Board, but nonetheless must confer with the Board before filing
`
`such a motion. 37 C.F.R. § 42.121(a). To fulfill this requirement, Patent
`
`Owner should request a conference call with the Board no later than two
`
`weeks prior to DUE DATE 1.
`
`4
`
`
`
`IPR2018-00102
`Patent 9,848,543 B2
`
`
`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”). If Patent
`
`Owner elects to receive preliminary guidance from the Board, 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 Lectrosonics, Inc. v. Zaxcom,
`
`Inc., Case IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential).
`
`G. Request for Oral Hearing
`
`Any request for an oral hearing must comply with 37 C.F.R.
`
`§ 42.70(a). To permit the Board sufficient time to schedule the hearing, the
`
`parties may not stipulate to an extension of the request for oral hearing
`
`beyond DUE DATE 4. Unless the Board notifies the parties otherwise, a
`
`hearing, 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 hearing on its behalf, the party should notify the Board as soon as
`
`possible, and no later than the deadline for requesting a hearing. The parties
`
`should note that the earlier a request for accommodation is made, the more
`
`likely the Board will be able to accommodate the request.
`
`5
`
`
`
`IPR2018-00102
`Patent 9,848,543 B2
`
`
`II. DUE DATES
`
`The due dates for the parties to take action in this proceeding are set
`
`forth below. The parties may stipulate to modify DUE DATES 1–3, 5,
`
`and 6, but no later than DUE DATE 7. The parties may not modify DUE
`
`DATES 4, 7, and 8. Any such stipulation should consider the effect on
`
`timing 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. A notice of any stipulation must be filed promptly
`
`with the Board, identifying specifically the changed due dates.
`
`DUE DATE 1 ........................................................................ August 7, 2019
`
`Patent Owner may file—
`
`1. A response to the petition. 37 C.F.R. § 42.120.
`
`2. A motion to amend the patent. 37 C.F.R. § 42.121.
`
`DUE DATE 2 .................................................................... October 16, 2019
`
`Petitioner may file—
`
`1. A reply to Patent Owner’s response to the petition
`
`2. An opposition to motion to amend the patent.
`
`DUE DATE 3 .................................................................. November 20, 2019
`
`Patent Owner may file—
`
`
`
`1. A sur-reply to Petitioner’s reply. The sur-reply is limited to
`five pages.
`
`2. A reply to Petitioner’s opposition to any motion to amend or a
`revised motion to amend the patent.
`
`DUE DATE 4 ................................................................. December 18, 2019
`
`Either party may file a request for oral hearing. 37 C.F.R. § 42.70(a).
`
`6
`
`
`
`IPR2018-00102
`Patent 9,848,543 B2
`
`DUE DATE 5 ...................................................................... January 7, 2020
`
`Petitioner may file a sur-reply to Patent Owner’s reply to Petitioner’s
`opposition to motion to amend. The sur-reply is limited to five pages.
`
`
`
`Either party may file a motion to exclude evidence. 37 C.F.R
`§ 42.64(c).
`
`DUE DATE 6 .................................................................... January 14, 2020
`
`Either party may file an opposition to a motion to exclude evidence.
`
`Either party may request a pre-hearing conference.
`
`DUE DATE 7 .................................................................... January 21, 2020
`
`Either party may file a reply to an opposition to a motion to exclude.
`
`DUE DATE 8 .................................................................... January 28, 2020
`
`An oral hearing will be held on this date, if requested by either party.
`
`
`
`FOR PETITIONER:
`
`
`
`Scott D. Balderston
`Steven R. Olsen
`DEVELOPMENTAL TECHNOLOGIES, LLC
`sbalderston@symbus.com
`solsen@sropetent.com
`
`
`FOR PATENT OWNER:
`
`
`
`Stephen J. Gombita
`Steven C. Benjamin
`E.I. DU PONT DE NeMOURS AND COMPANY
`stephen.j.gombita@dupont.com
`steven.c.benjamin@dupont.com
`
`7
`
`
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