`Tel: 571-272-7822
`
`Paper: 10
`Entered: October 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LKQ CORPORATION and
`KEYSTONE AUTOMOTIVE INDUSTRIES, INC.,
`Petitioner,
`v.
`GM GLOBAL TECHNOLOGY OPERATIONS LLC,
`Patent Owner.
`
`
`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)1
`
`
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`1 We issue one Order to be filed in each proceeding. The Parties are not
`authorized to use this heading.
`
`
`
`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
`
`
`A. GENERAL INSTRUCTIONS
`1.
`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
`2.
`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. 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
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`
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
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`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 Practice
`Guide 48,761.
`3.
`Discovery Disputes
`The Board encourages parties to resolve disputes, including those
`relating to discovery, on their own. To the extent that a dispute arises
`between the parties, 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.
`4.
`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.
`5.
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(2).
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
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`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.
`6. Motion to Amend
`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 set forth in the Due Date
`Appendix attached hereto. 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 request preliminary
`guidance from the Board on its motion, 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 MTA Pilot
`Program Notice, unless otherwise ordered by the Board in any of these
`proceedings. The parties are further directed to the Board’s Guidance on
`Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV),
`and Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129 (Paper 15)
`(PTAB Feb. 25, 2019) (precedential).
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
`
`As indicated in the MTA Pilot Program Notice, Patent Owner has the
`option at DUE DATE 3 to file a revised motion to amend, instead of a reply,
`as noted above, after receiving Petitioner’s opposition to the original motion
`to amend and/or after receiving the Board’s preliminary guidance, if
`requested. A revised motion to amend must provide amendments,
`arguments, and/or evidence in a manner that is responsive to issues raised in
`the preliminary guidance and/or Petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board shall enter
`a revised scheduling order setting the briefing schedule for that revised
`motion and adjusting other due dates as needed. MTA Pilot Program
`Notice, App. 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary guidance on the motion to amend and the Patent Owner
`does not file either a reply to the opposition to the motion to amend or a
`revised motion to amend at DUE DATE 3, Petitioner may file a reply to the
`Board’s preliminary guidance, no later than three (3) weeks after DUE
`DATE 3. The reply may only respond to the preliminary guidance. Patent
`Owner may file a sur-reply in response to Petitioner’s reply to the Board’s
`preliminary guidance. The sur-reply may only respond to arguments made
`in the reply and must be filed no later than three (3) weeks after the
`Petitioner’s reply. No new evidence may accompany the reply or the sur-
`reply in this situation.
`7.
`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
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
`
`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 room 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.
`Parties should note that 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 to 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 3, 5, and 6 (earlier or later, but no later than
`DUE DATE 7). In stipulating to move any due dates in the scheduling
`order, the parties must be cognizant that the Board requires four weeks after
`the filing of an opposition to the motion to amend (or the due date for the
`opposition, if none is filed) for the Board to issue its preliminary guidance, if
`requested by Patent Owner. A notice of the stipulation, specifically
`identifying the changed due dates, must be promptly filed. The parties may
`not stipulate an extension of DUE DATES 4, 7, and 8.
`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
`supplement evidence (§ 42.64(b)(2)), to conduct cross-examination
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`6
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`
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
`
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`1. DUE DATE 1
`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
`arguments for patentability not raised in the response may be deemed
`waived.
`b. A motion to amend the patent (37 C.F.R. § 42.121).
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may file either: (a) a reply to the opposition to the
`motion to amend and, if provided, the Board’s preliminary guidance; or (b) a
`revised motion to amend.
`4. DUE DATE 4
`Either party may file a request for oral argument, which may not be
`extended by stipulation.
`5. DUE DATE 5
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend. See Practice Guide Update 14–16.
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`
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
`
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)). See Practice Guide Update 16–18.
`6. DUE DATE 6
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`8. DUE DATE 8
`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.
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`8
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
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`DUE DATE APPENDIX
`
`DUE DATE 1 ......................................................................... January 5, 2021
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
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`DUE DATE 2 ......................................................................... March 30, 2021
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ............................................................................ May 11, 2021
`Patent owner’s sur-reply to reply
`Patent owner’s reply to Petitioner’s opposition to motion to amend or
`Patent Owner’s revised motion to amend
`
`DUE DATE 4 ............................................................................ May 25, 2021
`Request for oral argument (no stipulated extension allowed)
`
`DUE DATE 5 .............................................................................. June 8, 2021
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
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`DUE DATE 6 ............................................................................ June 15, 2021
`Opposition to motion to exclude
`Request for pre-hearing conference
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`DUE DATE 7 ............................................................................ June 22, 2021
`Reply to opposition to motion to exclude
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`9
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`
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`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
`
`DUE DATE 8 ............................................................................ June 29, 2021
`Oral argument (if requested)
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`10
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`
`
`IPR2020-00821 (Patent D813,759 S)
`PGR2020-00054 (Patent D864,065 S)
`PGR2020-00055 (Patent D855,508 S)
`
`
`PETITIONER:
`
`Barry F. Irwin
`Reid Huefner
`IRWIN IP LLC
`birwin@irwinip.com
`rhuefner@irwinip.com
`
`PATENT OWNER:
`
`Dorothy P. Whelen
`Jennifer Huang
`Craig A. Deutsch
`Grace J. Kim
`Joseph A. Herriges (Pro Hac Vice)
`FISH & RICHARDSON P.C.
`IPR45343-0018IP1@fr.com
`PTABInbound@fr.com
`whelan@fr.com
`jjh@fr.com
`deutsch@fr.com
`gkim@fr.com
`jhuang@fr.com
`herriges@fr.com
`
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