`571-272-7822
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`Paper 24
`Date: April 18, 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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`ABB, INC.
`Petitioner
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`v.
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`ROY-G-BIV CORPORATION
`Patent Owner
`____________
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`Case IPR2013-00062
`Patent 6,516,236 B1
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`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JENNIFER S. BISK, Administrative Patent Judges.
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`BISK, Administrative Patent Judge.
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`SCHEDULING ORDER
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`IPR2012-00062
`Patent 6,516,236 B1
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`A. DUE DATES
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`This order sets due dates for the parties to take action after institution of the
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`proceeding. The parties may stipulate to different dates for DUE DATES 1 through
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`3 (earlier or later, but no later than DUE DATE 4). A notice of the stipulation,
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`specifically identifying the changed due dates, must be promptly filed. The parties
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`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 of the
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`stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement
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`evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R. §
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`42.53(d)(2)), and to draft papers depending on the evidence and cross-examination
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`testimony (see section B, below).
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`The parties are reminded that the Testimony Guidelines appended to the
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`Trial Practice Guide, 77 Fed.Reg. 48756, 48772 (Aug. 14, 2012) (Appendix D),
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`apply to this proceeding. The Board may impose an appropriate sanction for
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`failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For example,
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`reasonable expenses and attorneys’ fees incurred by any party may be levied on a
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`person who impedes, delays, or 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 DUE DATE
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`1. If the patent owner elects not to file anything, the patent owner must arrange a
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`conference call with the parties and the Board. The patent owner is cautioned that
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`any arguments for patentability not raised in the response will be deemed waived.
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`IPR2012-00062
`Patent 6,516,236 B1
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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 opposition to
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`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 patent
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`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-examination
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`testimony of a reply witness (see section C, below) by DUE DATE 4.
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`b. Each party must file any motion to exclude evidence (37 C.F.R § 42.64(c)) and
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`any request for oral argument (37 C.F.R. § 42.70(a)) by 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 cross-
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`examination testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude evidence by DUE
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`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 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—
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`1. Cross-examination begins after any supplemental evidence is due. 37 C.F.R.
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`§§ 42.53(d)(2).
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`3
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`IPR2012-00062
`Patent 6,516,236 B1
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`2. Cross-examination ends no later than a week before the filing date for any paper
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`in which the cross-examination testimony is expected to be 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 a
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`mechanism to draw the Board’s attention to relevant cross-examination testimony
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`of a reply witness, since no further substantive paper is permitted after the reply.
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`See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The
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`observation must be a concise statement of the relevance of precisely identified
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`testimony to a precisely identified argument or portion of an exhibit. Each
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`observation should not exceed a single, short paragraph. The patent owner may
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`respond to the observation. Any response must be equally concise and specific.
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`DUE DATE APPENDIX
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`DUE DATE 1………………………………………………….July 18, 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……………………………………………………..October 18, 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…………………………………………………November 18, 2013
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`Patent owner’s reply to petitioner opposition to motion to amend
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`DUE DATE 4…………………………………………………December 12, 2013
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`Petitioner’s motion for observation regarding
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`4
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`IPR2012-00062
`Patent 6,516,236 B1
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`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…………………………………………………January 6, 2014
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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…………………………………………………January 13, 2014
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`Reply to opposition to motion to exclude
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`DUE DATE 7…………………………………………………January 23, 2014
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`Oral argument (if requested)
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`5
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`IPR2012-00062
`Patent 6,516,236 B1
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`For PETITIONER:
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`Rick McLeod
`and
`John Vandenberg
`Klarquist Sparkman LLP
`rick.mcleod@klarquist.com
`john.vandenberg@klarquist.com
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`For PATENT OWNER
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`Richard Black
`and
`Joel Arb
`Foster Pepper PLLC
`blacr@foster.com
`ardjo@foster.com
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`6
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