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`Trials@uspto.gov Paper 17
`571-272-7822 Entered: January 14, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TOYOTA MOTOR CORPORATION
`Petitioner,
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`v.
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`AMERICAN VEHICULAR SCIENCES
`Patent Owner
`____________
`
`Case IPR2013-00424
`Patent 5,845,000
`____________
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`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`BARBARA A. PARVIS, Administrative Patent Judges.
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`JEFFERSON, Administrative Patent Judge.
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`SCHEDULING ORDER
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`Case IPR2013-00424
`Patent 5,845,000
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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
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`through 3 (earlier or later, but no later than DUE DATE 4). A notice of the
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`stipulation, specifically identifying the changed due dates, must be promptly filed.
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`The 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 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 file papers relying 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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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012)
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`(Appendix D), apply to this proceeding. The Board may impose an appropriate
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`sanction for failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
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`example, reasonable expenses and attorney fees incurred by a party may be levied
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`on a 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
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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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`2
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`Case IPR2013-00424
`Patent 5,845,000
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`owner is cautioned that any argument for patentability not raised and fully
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`briefed in the response will be deemed waived.
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`2. DUE DATE 2
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`The petitioner must file a reply to the patent owner’s response and an
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`opposition to the patent owner’s motion to amend by DUE DATE 2.
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`3. DUE DATE 3
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`The patent owner must file a 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 a motion for an observation on the cross-
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`examination testimony of a reply witness (see section C, below) by
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`DUE DATE 4.
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`b. Each party must file a 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))
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`by DUE DATE 4.
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`5. DUE DATE 5
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`a. The patent owner must file a reply to a petitioner’s observation on
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`cross-examination testimony by DUE DATE 5.
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`b. Each party must file an opposition to a motion to exclude evidence by
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`DUE DATE 5.
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`6. DUE DATE 6
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`Each party must file a reply to an opposition to a motion to exclude evidence
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`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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`3
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`Case IPR2013-00424
`Patent 5,845,000
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`B.
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`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 for
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`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 after
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`the reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012). The observation should not exceed a single, short paragraph.
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`The patent owner may respond to the observation. Any response must be equally
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`concise and specific.
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`4
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`Case IPR2013-00424
`Patent 5,845,000
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`DUE DATE APPENDIX
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`DUE DATE 1 ..................................................................................... March 17, 2014
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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 ........................................................................................ May 29, 2014
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`Petitioner’s reply to Patent Owner’s response to petition
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`Petitioner’s opposition to Patent Owner’s motion to amend
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`DUE DATE 3 ........................................................................................ June 19, 2014
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`Patent Owner’s reply to Petitioner’s opposition to
`Patent Owner’s motion to amend
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`DUE DATE 4 ......................................................................................... July 10, 2014
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`Petitioner’s motion for observation regarding
`cross-examination of reply witness
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`DUE DATE 5 ......................................................................................... July 24, 2014
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`Motion to exclude evidence
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`Request for oral argument
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`Patent Owner’s response to observation
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`Opposition to motion to exclude evidence
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`DUE DATE 6 ......................................................................................... July 31, 2014
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`Reply to opposition to motion to exclude evidence
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`DUE DATE 7 .................................................................................... August 15, 2014
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`Oral argument (if requested)
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`5
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`Case IPR2013-00424
`Patent 5,845,000
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`For PETITIONER:
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`Matt Berkowitz
`Thomas R. Makin
`KENYON & KENYON LLP
`mberkowitz@kenyon.com
`tmakin@kenyon.com
`ptab@kenyon.com
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`For PATENT OWNER:
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`Thomas J. Wimbiscus
`Scott P. McBride
`MCANDREWS HELD & MALLOY, LTD.
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
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`6
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