`Tel: 571-272-7822
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`Paper 12
`Entered: February 20, 2015
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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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`JPMORGAN CHASE & CO. AND JPMORGAN CHASE BANK, N.A.,
`Petitioner,
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`v.
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`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`Case CBM2014-00179
`Patent 5,940,510
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`
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`
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`Before TREVOR M. JEFFERSON, MITCHELL G. WEATHERLY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
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`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
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`A. INITIAL CONFERENCE CALL
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`Unless at least one of the parties requests otherwise, we will not
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`conduct an initial conference call as described in the Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). In lieu of
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`such a call, we instruct the parties as follows:
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`CBM2014-00179
`Patent 5,940,510
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`(1) If a party wishes to request an initial conference call, that party
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`shall request the call no later than 25 days after the institution of
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`trial;
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`(2) A request for a conference call shall include: (a) a list of proposed
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`motions, if any, to be discussed during the call and (b) a list of
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`dates and times when the parties are available for the call; and
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`(3) The parties shall be prepared to discuss during the initial
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`conference call their concerns, if any, relating to the schedule in
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`this proceeding as set forth below.
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`Absent good cause shown, we will not conduct an initial conference call
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`later than 30 days after the institution of a trial.
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`B. GENERAL INSTRUCTIONS
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`1. Protective Order
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`A protective order does not exist in this proceeding unless the parties
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`file one and the Board approves it. If either party files a motion to seal
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`before entry of a protective order, a jointly proposed protective order should
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`be presented as an exhibit to the motion. We encourage the parties to adopt
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`the Board’s default protective order if they conclude that a protective order
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`is necessary. See Default Protective Order, Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose
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`to propose a protective order deviating from the default protective order,
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`they must submit the proposed protective order jointly along with a marked-
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`up comparison of the proposed and default protective orders showing the
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`differences.
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`The Board has a strong interest in the public availability of the
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`proceedings. We advise the parties that redactions to documents filed in this
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`proceeding should be limited strictly to isolated passages consisting entirely
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`of confidential information, and that the thrust of the underlying argument or
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`evidence must be clearly discernible from the redacted versions. We also
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`advise the parties that information subject to a protective order will become
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`public if identified in a final written decision in this proceeding, and that a
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`motion to expunge the information will not necessarily prevail over the
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`public interest in maintaining a complete and understandable file history.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
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`2. Motions to Amend
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`Patent Owner may file a motion to amend without prior authorization
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`from the Board. Nevertheless, the Patent Owner must confer with the Board
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`before filing such a motion. 37 C.F.R. § 42.221(a). We direct the parties to
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`the Board’s website for representative decisions relating to Motions to Amend
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`among other topics. The parties may access these representative decisions at:
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`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
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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: (a) certify that it has conferred
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`with the other party in an effort to resolve the dispute; (b) identify with
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`specificity the issues for which agreement has not been reached; (c) identify
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`the precise relief to be sought; and (d) 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 (Aug. 14,
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`2012) (Appendix D), apply to this proceeding. 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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`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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`C. 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 to 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 to an extension of DUE
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`DATES 6 and 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 D, below).
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`1. DUE DATE 1
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`The patent owner may file—
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`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.220), and
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`A motion to amend the patent (37 C.F.R. § 42.221).
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`The patent owner must file any such response or motion to amend by DUE
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`DATE 1. If the patent owner elects not to file anything, the patent owner
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`must arrange a conference call with the parties and the Board. The patent
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`owner is cautioned that any arguments for patentability not raised in the
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`response will be deemed waived.
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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.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section E, below) by
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`DUE DATE 4.
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`b.
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`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.
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`Each party 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.
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`Each party must file any opposition to a motion to exclude
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`evidence 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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`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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`D. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`E. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
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`concise statement of the relevance of precisely identified testimony to a
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`precisely identified argument or portion of an exhibit. Each observation
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`should not exceed a single, short paragraph. The opposing party may
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`respond to the observation. Any response must be equally concise and
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`specific.
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`DUE DATE APPENDIX
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`DUE DATE 1 ............................................................................ May 11, 2015
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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 3, 2015
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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 .................................................................... September 1, 2015
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 .................................................................. September 18, 2015
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`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 ........................................................................ October 2, 2015
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ........................................................................ October 9, 2015
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ...................................................................... October 22, 2015
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`Oral argument (if requested)
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`PETITIONER:
`
`Andrea G. Reister
`Jay I. Alexander
`Gregory S. Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`jalexander@cov.com
`gdischer@cov.com
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`weatherwax@glwllp.com
`hendifar@glwllp.com
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