Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: January29, 2025
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AVATION MEDICAL, INC.,
`Petitioner,
`v.
`EMKINETICS, INC.,
`Patent Owner.
`
`PGR2024-00043
`Patent 11,844,943 B2
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and JASON W. MELVIN,
`Administrative Patent Judges.
`
`NEW, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Entered: January29, 2025
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AVATION MEDICAL, INC.,
`Petitioner,
`v.
`EMKINETICS, INC.,
`Patent Owner.
`
`PGR2024-00043
`Patent 11,844,943 B2
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and JASON W. MELVIN,
`Administrative Patent Judges.
`
`NEW, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`
`1.
`
`A. GENERAL INSTRUCTIONS
`Initial and Additional Conference Calls
`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 2019 Consolidated Trial Practice Guide
`(“Consolidated Practice Guide”)1 at 9–10, 65 (guidance in preparing for a
`conference call); see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). A request
`for an initial conference call shall include a list of proposed motions, if any,
`to be discussed during the call.
`The parties may request additional conference calls as needed. Any
`email requesting a conference call with the Board should: (a) copy all
`parties, (b) indicate generally the relief being requested or the subject matter
`of the conference call, (c) include multiple times when all parties are
`available, (d) state whether the opposing party opposes any relief requested,
`and (e) if opposed, either certify that the parties have met and conferred
`telephonically or in person to attempt to reach agreement, or explain why
`such meet and confer did not occur. The email may not contain substantive
`argument and, unless otherwise authorized, may not include attachments.
`See Consolidated Practice Guide at 9–10.
`
`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 shall be filed as an exhibit with the
`
`2.
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`motion. It is the responsibility of the party whose confidential information is
`at issue, not necessarily the proffering party, to file the motion to seal. 2 The
`Board encourages the parties to adopt the Board’s default protective order if
`they conclude that a protective order is necessary. See Consolidated Practice
`Guide at 107–122 (App. B, Protective Order Guidelines and 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
`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 Consolidated
`Practice Guide at 21–22.
`
`Discovery Disputes
`The Board encourages parties to resolve disputes relating to discovery
`on their own. To the extent that a dispute arises between the parties relating
`
`3.
`
`
`2 If the entity whose confidential information is at issue is not a party to the
`proceeding, please contact the Board.
`
`3
`
`
`
`4.
`
`PGR2024-00043
`Patent 11,844,943 B2
`to discovery, 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.
`
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines)
`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.
`
`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).
`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. § 42.221(a). To satisfy this
`requirement, Patent Owner should request a conference call with the Board
`
`5.
`
`4
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`no later than two weeks prior to DUE DATE 1. See Section 8 below
`regarding DUE DATES.
`Any motion to amend and briefing related to such a motion shall
`comply with the rules pertaining to motions to amend (37 C.F.R. § 42.221)
`and the practices and procedures described in Lectrosonics, Inc. v. Zaxcom,
`Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential).
`Patent Owner has the option to receive preliminary guidance from the
`Board on its motion to amend. See 37 C.F.R. § 42.221(e). 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. Id. at
`§ 42.221(a)(1)(ii).
`At DUE DATE 3, Patent Owner may file a reply to the opposition to
`the motion to amend and/or the preliminary guidance. 37 C.F.R.
`§ 42.221(e)(3). In lieu of a reply, Patent Owner has the option to file a
`revised motion to amend that addresses the issues raised in the preliminary
`guidance or in petitioner’s opposition to the motion to amend. Id. at
`§ 42.221(f)(1)-(2). Patent Owner may elect to file a revised motion to
`amend even if Patent Owner did not request to receive preliminary guidance
`on its motion to amend. A revised motion to amend must include one or
`more new proposed substitute claims in place of the previously presented
`substitute claims, where each new proposed substitute claim presents a new
`claim amendment. Id.
`If Patent Owner files a revised motion to amend, the Board may
`determine whether to request the Chief Administrative Patent Judge to
`extend the final written decision deadline more than one year from the date a
`trial is instituted in accordance with § 42.100(c) and whether to extend any
`
`5
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`remaining deadlines under § 42.5(c)(2). 37 C.F.R. § 42.221(f)(1). Typically
`the Board will enter a revised scheduling order setting the briefing schedule
`for that revised motion and adjusting other due dates as needed.
`At DUE DATE 5, Petitioner may file a sur-reply that is limited to
`responding to the preliminary guidance and/or arguments made in the patent
`owner’s reply brief. Id. at § 42.221(e)(3). The sur-reply may not be
`accompanied by new evidence, but may comment on any new evidence filed
`with the reply and/or point to cross-examination testimony of a reply
`witness, if relevant to the arguments made in the reply brief. Id.
`If the Board issues preliminary guidance on the motion to amend, and
`Patent Owner files neither a reply to the opposition to the motion to amend
`nor 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 or at any other DUE DATE that the Board specifies in a revised
`scheduling order. The reply may only respond to the preliminary guidance
`and may not be accompanied by new evidence. 37 C.F.R. § 42.221(e)(4).
`Patent Owner may file a sur-reply in response to Petitioner’s reply to the
`Board’s preliminary guidance. Id. The sur-reply may only respond to
`petitioner’s reply and may not be accompanied by new evidence. Id. The
`sur-reply must be filed no later than three (3) weeks after Petitioner’s reply
`or at any other DUE DATE that the Board specifies in a revised scheduling
`order.
`In the event the Board requests examination assistance pursuant to 37
`C.F.R. § 42.221(d)(3)(ii), the parties will be notified of the request and may
`adjust the scheduling order as needed.
`
`
`6
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`Oral Argument
`7.
`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.
`The parties may request that the oral argument be held at the USPTO
`headquarters in Alexandria, VA. The parties may also request that the oral
`argument instead be held virtually by videoconference. For the parties’
`information in making this decision, and at the present time, one judge will
`appear remotely by video, and two judges one will appear in person at the
`USPTO headquarters in Alexandria, VA. The parties should state in the
`request for oral argument, DUE DATE 4, whether the parties would prefer
`either a video hearing or an in-person hearing. To the extent the parties
`disagree, they should meet and confer; if the dispute cannot be resolved by
`meeting and conferring, the parties should inform the Board of each party’s
`individual preferences. PTAB will only conduct an in-person hearing when
`requested by all parties.
`Note that the Board may not be able to honor the parties’ preferences
`due to, among other things, the availability of hearing room resources, the
`needs of the panel, and USPTO policy at the time of the hearing. The Board
`will consider the parties’ request and notify the parties of how and where the
`hearing will be conducted.
`For in-person hearings, 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
`
`7
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`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.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`their skills and to aid in succession planning for the next generation. The
`Board defines a LEAP practitioner as a patent agent or attorney having
`three (3) or fewer substantive oral arguments in any federal tribunal,
`including PTAB. Parties are encouraged to participate in the Board’s LEAP
`program.3 The Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.4
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent. The Board discerns
`that it is often LEAP practitioners who have the best understanding of the
`facts of the case and the evidence of record, and the Board encourages their
`participation.
`
`
`3 Information about the LEAP program can be found at www.uspto.gov/leap.
`4 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form
`is available at www.uspto.gov/leap.
`
`8
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`DUE DATES
`8.
`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, 5, and 6, as well as the portion of DUE DATE 2 related to
`Petitioner’s reply (earlier or later, but no later than DUE DATE 3 for Patent
`Owner’s sur-reply) and the portion of DUE DATE 3 related to Patent
`Owner’s sur-reply (earlier or later, but no later than DUE DATE 7). The
`parties may not stipulate to a different date for the portion of DUE DATE 2
`related to Petitioner’s opposition to a motion to amend, or for the portion of
`DUE DATE 3 related to Patent Owner’s reply to an opposition to a motion
`to amend (or Patent Owner’s revised motion to amend) without prior
`authorization from the Board. 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
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`
`
`9
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`a. DUE DATE 1
`Patent Owner may file—
`a. A response to the petition (37 C.F.R. § 42.220). 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 not raised in the response may be deemed waived.
`b. A motion to amend the patent (37 C.F.R. § 42.221) after conferring
`with the Board under 37 C.F.R. § 42.221(a).
`
`b. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
`c. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may also file either:
`a reply to the opposition to the motion to amend and/or
`i.
`preliminary guidance (if provided); or
`a revised motion to amend.
`ii.
`NOTE: If Patent Owner files neither of the above papers (a reply to
`the opposition or a revised motion to amend), and the Board has issued
`preliminary guidance, Petitioner may file a reply to the preliminary
`guidance, no later than three (3) weeks after DUE DATE 3. Patent Owner
`may file a sur-reply to Petitioner’s reply to the preliminary guidance no later
`than three (3) weeks after Petitioner’s reply.
`
`
`10
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`d. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`
`e. DUE DATE 5
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`
`f. 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.
`
`g. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`h. 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.
`
`11
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ................................................................. April 23, 2025
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... July 16, 2025
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 .............................................................. August 27, 2025
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the
`petition
`Patent Owner’s reply to Petitioner’s opposition to the motion to
`amend OR Patent Owner’s revised motion to amend
`DUE DATE 4 ..........................................................September 17, 2025
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ............................................................... October 8, 2025
`Petitioner’s sur-reply to the opposition to the motion to amend
`Motion to exclude evidence
`DUE DATE 6 ............................................................. October 15, 2025
`Opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ............................................................. October 22, 2025
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ............................................................. October 28, 2025
`Oral argument (if requested)
`
`12
`
`
`
`PGR2024-00043
`Patent 11,844,943 B2
`For PETITIONER:
`Todd Tucker
`Kyle Deighan
`CALFEE, HALTER & GRISWOLD LLP
`ttucker@calfee.com
`kdeighan@calfee.com
`
`
`For PATENT OWNER:
`
`David Gerasimow
`The Law Offices of David A. Gerasimow, P.C.
`dave@gerasimowlaw.com
`
`
`Eran Steinberg
`venture@eransteinberg.com
`
`
`
`
`13
`
`
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