Trials@uspto.gov
`571-272-7822
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`
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`Paper 10
`Date: June 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2019-00018
`Patent 9,891,799 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG,
`and CARL M. DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`A. GENERAL INSTRUCTIONS
`
`1. Requests for an 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.
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: June 5, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2019-00018
`Patent 9,891,799 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG,
`and CARL M. DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`A. GENERAL INSTRUCTIONS
`
`1. Requests for an 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.
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`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. 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, Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, App. B (Aug. 14, 2012). 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
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`proceedings. Redactions to documents filed in this proceeding should be
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`limited to the minimum amount necessary to protect confidential
`
`information, and the thrust of the underlying argument or evidence must be
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`clearly discernible from the redacted versions. We also advise the parties
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`that information subject to a protective order may become public if
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`identified in a final written decision in this proceeding, and that a motion to
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`expunge the information will not necessarily prevail over the public interest
`
`2
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`PGR2019-00018
`Patent 9,891,799 B2
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`in maintaining a complete and understandable file history. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`3. Discovery Disputes
`
`The panel encourages parties to resolve disputes relating to discovery
`
`on their own and in accordance with the precepts set forth in 37 C.F.R.
`
`§ 42.1(b). To the extent that a dispute arises between the parties relating to
`
`discovery, the parties shall 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 and the other party in order to seek
`
`authorization to move for relief.
`
`In any request for a conference call with the Board to resolve a
`
`discovery dispute, the requesting party shall: (1) certify that it has conferred
`
`with the other party in an effort to resolve the dispute; (2) identify with
`
`specificity the issues for which agreement has not been reached; (3) identify
`
`the precise relief to be sought; and (4) propose specific dates and times at
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`which both parties are available for the conference call.
`
`4. Depositions
`
`The parties are advised that the Testimony Guidelines appended to the
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772, 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.
`
`Whenever a party submits a deposition transcript as an exhibit in this
`
`proceeding, the submitting party shall file the full transcript of the deposition
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`3
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`PGR2019-00018
`Patent 9,891,799 B2
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`rather than excerpts of only those portions being cited. After a deposition
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`transcript has been submitted as an exhibit, all parties who subsequently cite
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`to portions of the transcript shall cite to the first-filed exhibit rather than
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`submitting another copy of the same transcript.
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`5. Cross-Examination
`
`Except as the parties might otherwise agree, for each due date—
`
`a. Cross-examination ordinarily takes place after any
`
`supplemental evidence is due. 37 C.F.R. § 42.53(d)(2).
`
`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. Id.
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`6. 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
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`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.
`
`4
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`
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`PGR2019-00018
`Patent 9,891,799 B2
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`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 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
`
`be promptly filed. The parties may not stipulate an extension of DUE
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`DATES 6 and 7, or to the requests for oral hearing.
`
`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
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`supplement evidence (§ 42.64(b)(2)), to conduct cross-examination
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`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
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`examination testimony.
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`1. DUE DATE 1
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`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
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`arguments for patentability not raised in the response may be deemed
`
`waived, and
`
`b.
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`A motion to amend the patent (37 C.F.R. § 42.121). Patent
`
`Owner may file a motion to amend without prior authorization from the
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`Board. Nevertheless, Patent Owner must confer with the Board before filing
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`such a motion. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent
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`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
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`Guidance on Motions to Amend in view of Aqua Products
`
`5
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`
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`PGR2019-00018
`Patent 9,891,799 B2
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`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions
`
`_to_amend_11_2017.pdf), and Western Digital Corp. v. SPEX Techs., Inc.,
`
`Case IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (providing
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`information and guidance on motions to amend).
`
`2. DUE DATE 2
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`Petitioner may file a reply to the Patent Owner’s response.
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`Petitioner may file an opposition to the motion to amend.
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`3. DUE DATE 3
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`Patent Owner may file a sur-reply to Petitioner’s reply. The sur-reply
`
`is limited to five pages.
`
`Patent Owner may file a reply to the opposition to the motion to
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`amend or a revised motion to amend the patent.
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`4. DUE DATE 4
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`Either party request for oral argument (37 C.F.R. § 42.70(a)).
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`5. DUE DATE 5
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`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.
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`Either party may file an opposition to a motion to exclude evidence.
`
`37 C.F.R. § 42.64(c).
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`6. DUE DATE 6
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`Either party may file a reply to an opposition to a motion to exclude
`
`evidence.
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`Either party may request that the Board hold a pre-hearing conference.
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`6
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`PGR2019-00018
`Patent 9,891,799 B2
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`7. DUE DATE 7
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`Either party may file a reply to an opposition to a motion to exclude.
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`8. DUE DATE 8
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`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
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`govern the parties’ arguments.
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`7
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`PGR2019-00018
`Patent 9,891,799 B2
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`DUE DATE APPENDIX
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`DUE DATE 1 ......................................................................... August 26, 2019
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 ................................................................... November 18, 2019
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 .................................................................... December 30, 2019
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`Patent Owner’s sur-reply to Petitioner’s reply
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ........................................................................ January 21, 2020
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`Petitioner’s sur-reply to Patent Owner’s reply to the opposition to the
`
`motion to amend
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ...................................................................... February 11, 2020
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`Opposition to motion to exclude
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`DUE DATE 6 ...................................................................... February 18, 2020
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`Reply to opposition to motion to exclude
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`Request for pre-hearing conference
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`DUE DATE 7 ...................................................................... February 25, 2020
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`Oral argument (if requested)
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`
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`8
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`PGR2019-00018
`Patent 9,891,799 B2
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`DUE DATE 8 …………………………………………… March 3, 2020
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`
`
`For PETITIONER:
`
`Jennifer Bush
`Jbush-ptab@fenwick.com
`
`For PATENT OWNER:
`
`Scott McKeown
`Scott.mckeown@ropesgray.com
`
`Matthew J. Rizzolo
`Jmatthew.rizzolo@ropesgray.com
`
`
`
`
`
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`9
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