`571-272-7822
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` Paper 30
`Entered: April 19, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`LIBERTY MUTUAL INSURANCE CO.
`Petitioner
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`v.
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`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner
`____________
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`Case CBM2012-00003 (JL)
`Patent 8,140,358
`____________
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`
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`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
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`Chang, Administrative Patent Judge
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`FIRST REVISED SCHEDULING ORDER
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`A. DUE DATES
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`This order sets due dates for the parties to take action in this trial. The
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`parties may stipulate to different dates for DUE DATES 1 through 3 (earlier
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`or later, but no later than DUE DATE 4). A notice of the stipulation,
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`CBM2012-00003
`U.S. Patent No. 8,140,358
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`specifically identifying the changed due dates, must be promptly filed. The
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`parties may not stipulate to an extension of DUE DATES 4-7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see Section B).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48772 (Aug. 14,
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`2012) (Appendix D), apply to this trial. The Board may impose an
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`appropriate sanction for failure to adhere to the Testimony Guidelines.
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`37 C.F.R. § 42.12. For example, reasonable expenses and attorneys’ fees
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`incurred by any party may be levied on a person who impedes, delays, or
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`frustrates the fair examination of a witness.
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`1. DUE DATE 1
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`The patent owner may file—
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`a. A response to the petition (37 C.F.R. § 42.120), and
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`b. A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by
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`DUE DATE 1. If the patent owner elects not to file anything, the patent
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`owner must arrange a conference call with the parties and the Board. The
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`patent owner is cautioned that any arguments for patentability not raised and
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`fully briefed in the response will be deemed waived.
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`2
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`CBM2012-00003
`U.S. Patent No. 8,140,358
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`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
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`a. The petitioner must file any motion for an observation on the cross-
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`examination testimony of a reply witness (see Section C) by DUE DATE 4.
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`b. Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
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`DUE DATE 4.
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` 5. DUE DATE 5
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`a. The patent owner must file any reply to a petitioner observation on
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`cross-examination testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude evidence
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`by DUE DATE 5.
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`3
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`CBM2012-00003
`U.S. Patent No. 8,140,358
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1. Cross-examination begins after any supplemental evidence is due.
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`37 C.F.R. §§ 42.53(d)(2).
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`2. Cross-examination ends no later than a week before the filing date
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`for any paper in which the cross-examination testimony is expected to be
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`used. Id.
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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the petitioner with
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`a mechanism to draw the Board’s attention to relevant cross-examination
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`testimony of a reply witness, since no further substantive paper is permitted
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`after the reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
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`48768. The observation must be a concise statement of the relevance of
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`precisely identified testimony to a precisely identified argument or portion
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`of an exhibit. Each observation should not exceed a single, short paragraph.
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`The patent owner may respond to the observation. Any response must be
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`equally concise and specific.
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`4
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`CBM2012-00003
`U.S. Patent No. 8,140,358
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`DUE DATE APPENDIX
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`DUE DATE 1…………….………………………………….... June 5, 2013
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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……………………………………..…….….. August 1, 2013
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`Petitioner’s reply to patent owner response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3…………………………………………....... August 28, 2013
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`Patent owner’s reply to petitioner opposition to motion to amend
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`DUE DATE 4…………………………………………. September 16, 2013
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`Petitioner’s motion for observation regarding cross-examination of
`reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5…………………………………...…….. September 25, 2013
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`Patent owner’s response to observation
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`Opposition to motion to exclude
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`DUE DATE 6……………………………………….…….. October 1, 2013
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`Reply to opposition to motion to exclude
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`DUE DATE 7……………………………...……………… October 8, 2013
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`Oral argument (if requested)
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`5