`571-272-7822
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`Paper 11
`Date: June 11, 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.
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`
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`REVISED SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
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`A. GENERAL INSTRUCTIONS
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`1. Requests for an Initial Conference Call
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`The parties are directed to contact the Board within a month of this
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`Order if there is a need to discuss proposed changes to this Scheduling Order
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`or proposed motions that have not been authorized in this Order or other
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`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`
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`PGR2019-00018
`Patent 9,891,799 B2
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`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
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`preparing for the initial conference call). A request for an initial conference
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`call shall include a list of proposed motions, if any, to be discussed during
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`the call.
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`2. Protective Order
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`No protective order shall apply to this proceeding until the Board
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`enters one. If either party files a motion to seal before entry of a protective
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`order, a jointly proposed protective order should be presented as an exhibit
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`to the motion. The Board encourages the parties to adopt the Board’s
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`default protective order if they conclude that a protective order is necessary.
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`See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose to propose a
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`protective order deviating from the default protective order, they must
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`submit the proposed protective order jointly along with a marked-up
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`comparison of the proposed and default protective orders showing the
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`differences between the two and explain why good cause exists to deviate
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`from the default protective order.
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`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
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`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
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`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.
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`3. Discovery Disputes
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`The panel encourages parties to resolve disputes relating to discovery
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`on their own and in accordance with the precepts set forth in 37 C.F.R.
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`§ 42.1(b). To the extent that a dispute arises between the parties relating to
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`discovery, the parties shall meet and confer to resolve such a dispute before
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`contacting the Board. If attempts to resolve the dispute fail, a party may
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`request a conference call with the Board and the other party in order to seek
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`authorization to move for relief.
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`In any request for a conference call with the Board to resolve a
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`discovery dispute, the requesting party shall: (1) certify that it has conferred
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`with the other party in an effort to resolve the dispute; (2) identify with
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`specificity the issues for which agreement has not been reached; (3) identify
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`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.
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`4. Depositions
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`The parties are advised that the Testimony Guidelines appended to the
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772, Appendix
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`D, apply to this proceeding. The Board may impose an appropriate sanction
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`for failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
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`example, reasonable expenses and attorneys’ fees incurred by any party may
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`be levied on a person who impedes, delays, or frustrates the fair examination
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`of a witness.
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`Whenever a party submits a deposition transcript as an exhibit in this
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`proceeding, the submitting party shall file the full transcript of the deposition
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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
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`Except as the parties might otherwise agree, for each due date—
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`a. Cross-examination ordinarily takes place after any
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`supplemental evidence is due. 37 C.F.R. § 42.53(d)(2).
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`b. Cross-examination ordinarily ends no later than a week before
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`the filing date for any paper in which the cross-examination
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`testimony is expected to be used. Id.
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`6. Oral Argument
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`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
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`To permit the Board sufficient time to schedule the oral argument, the
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`parties may not stipulate to an extension of the request for oral argument
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`beyond the date set forth in the Due Date Appendix.
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`Unless the Board notifies the parties otherwise, oral argument, if
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`requested, will be held at the USPTO headquarters in Alexandria.
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`Seating in the Board’s hearing rooms may be limited, and will be
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`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
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`party should notify the Board as soon as possible, and no later than the
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`request for oral argument. Parties should note that the earlier a request for
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`accommodation is made, the more likely the Board will be able to
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`accommodate additional individuals.
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`B. DUE DATES
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`This order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate different dates for DUE
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`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
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`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.
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`In stipulating different times, the parties should consider the effect of
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`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—
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`a.
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`A response to the petition (37 C.F.R. § 42.220). If Patent
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`Owner elects not to file a response, Patent Owner must arrange a conference
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`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
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`waived, and
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`b.
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`A motion to amend the patent (37 C.F.R. § 42.221). Patent
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`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
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`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
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`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions
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`_to_amend_11_2017.pdf), and Western Digital Corp. v. SPEX Techs., Inc.,
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`Case IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (providing
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`information and guidance on motions to amend).
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`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
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`is limited to five pages.
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`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
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`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.
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`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
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`evidence.
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`Either party may request that the Board hold a pre-hearing conference.
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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
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`date. Approximately one month prior to the argument, the Board will issue
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`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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`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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`Request for oral argument (may not be extended by stipulation)
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`DUE DATE 5 ............................................................ February 11, 2020
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`Petitioner’s sur-reply to Patent Owner’s reply to the opposition to the
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`motion to amend
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`Motion to exclude evidence
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`DUE DATE 6 ............................................................ February 18, 2020
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`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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` Reply to opposition to motion to exclude
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`DUE DATE 8 …………………………………………… March 3, 2020
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`Oral argument (if requested)
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`PGR2019-00018
`Patent 9,891,799 B2
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`For PETITIONER:
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`Jennifer Bush
`Jbush-ptab@fenwick.com
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`For PATENT OWNER:
`
`Scott McKeown
`Scott.mckeown@ropesgray.com
`
`Matthew J. Rizzolo
`Jmatthew.rizzolo@ropesgray.com
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