`Trials@uspto.gov
`571-272-7822
`
`Date Entered: March 20, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`COMPANY, INC., EXPEDIA, INC., HOTELS.COM LP, HOTELS.COM GP,
`LLC, HOTWIRE, INC., ORBITZ WORLDWIDE, INC., PRICELINE.COM,
`INC., TRAVELOCITY.COM LP, and YAHOO! INC.
`Petitioner
`
`v.
`
`METASEARCH SYSTEMS, LLC
`Patent Owner
`
`
`
`
`
`Case CBM2014-0001
`Patent 8,326,924 B1
`____________
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`SCHEDULING ORDER
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`
`
`CBM2014-00001
`Patent 8,326,924 B1
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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
`parties may stipulate to different dates for DUE DATES 1 through 3 (earlier or
`later, but no later than DUE DATE 4). A notice of the stipulation, specifically
`identifying the changed due dates, must be promptly filed. The parties may not
`stipulate to an extension of DUE DATES 4-7.
`
`In stipulating to 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 (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.
`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony (see Section B).
`
`The parties are reminded that the Testimony Guidelines appended to the
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) (Appendix D),
`apply to this trial. 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.
`
`1. DUE DATE 1
`The patent owner may file—
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`a. A response to the petition (37 C.F.R. § 42.120), and
`
`b. A motion to amend the patent (37 C.F.R. § 42.121).
`The patent owner must file any such response or motion to amend by DUE
`DATE 1. If the patent owner elects not to file anything, the patent owner must
`arrange a conference call with the parties and the Board. The patent owner is
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`2
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`CBM2014-00001
`Patent 8,326,924 B1
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`cautioned that any arguments for patentability not raised and fully briefed in the
`response will be deemed waived.
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`2. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
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`3. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to the
`patent owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
`a. The petitioner must file any motion for an observation on the cross-
`examination testimony of a reply witness (see Section C) by DUE DATE 4.
`b. Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE
`DATE 4.
`
` 5. DUE DATE 5
`a. The patent owner must file any reply to a petitioner observation on cross-
`examination testimony by DUE DATE 5.
`b. Each party must file any opposition to a motion to exclude evidence by
`DUE DATE 5.
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`CBM2014-00001
`Patent 8,326,924 B1
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`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE DATE 7.
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
`1. Cross-examination begins after any supplemental evidence is due. 37
`C.F.R. § 42.53(d)(2).
`2. Cross-examination 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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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`A motion for observation on cross-examination provides the parties with a
`mechanism to draw the Board’s attention to relevant cross-examination testimony
`of a reply witness, since no further substantive paper is permitted after the reply.
`See Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The
`observation must be a concise statement of the relevance of precisely identified
`testimony to a precisely identified argument or portion of an exhibit. Each
`observation should not exceed a single, short paragraph. The opposing party may
`respond to the observation. Any response must be equally concise and specific.
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`CBM2014-00001
`Patent 8,326,924 B1
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`DUE DATE APPENDIX
`DUE DATE 1…………….…………………………….…...May 29, 2014
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`Patent owner’s response to the petition
`
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`Patent owner’s motion to amend the patent
`DUE DATE 2…………………………………………….August 7, 2014
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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………………………………………… September 4, 2014
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`Patent owner’s reply to petitioner opposition to motion to amend
`DUE DATE 4……………………………………………..September 25, 2014
`Petitioner’s motion for observation regarding cross-examination of reply
`witness
`Motion to exclude evidence
`
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`Request for oral argument
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`DUE DATE 5……………………………………………..October 9, 2014
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`Patent owner’s response to observation
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`Opposition to motion to exclude
`DUE DATE 6……………………………………………..October 16, 2014
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`Reply to opposition to motion to exclude
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`DUE DATE 7……………………………………………November 5, 2014
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`Oral argument (if requested)
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`5
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`CBM2014-00001
`Patent 8,326,924 B1
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`For Petitioner:
`
`John Vandenberg
`john.vandenberg@klarquist.com
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`Kristen Reichenbach
`kristen.reichenbach@klarquist.com
`
`For Patent Owner:
`
`Cyrus Morton
`camorton@rkmc.com
`
`Ryan Schultz
`rmschultz@rkmc.com
`
`
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`6