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` Paper 11
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` Entered: February 4, 2014
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`Trials@uspto.gov
`Tel: 571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-00472
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
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`SCHEDULING ORDER
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`A. DUE DATES
`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 or
`later, but no later than DUE DATE 4). A notice of the stipulation, specifically
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`Case IPR2013-00473
`Patent 8,176,267
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`identifying the changed due dates, must be promptly filed. 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
`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).
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`The parties are reminded that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48772 (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.
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`1. DUE DATE 1
`The patent owner may file—
`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
`cautioned that any arguments for patentability not raised and fully briefed in the
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`2
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`Case IPR2013-00473
`Patent 8,176,267
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`response will be deemed waived.
`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 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.
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`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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`6. DUE DATE 6
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`3
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`Case IPR2013-00473
`Patent 8,176,267
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`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
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`B. CROSS-EXAMINATION
`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 petitioner 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 Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (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 patent owner
`may respond to the observation. Any response must be equally concise and
`specific.
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`4
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`Case IPR2013-00473
`Patent 8,176,267
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`DUE DATE APPENDIX
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`DUE DATE 1…………….………………………………………… April 4, 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…………………………………………….…..……….. June 4,
`2014
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`Petitioner’s reply to patent owner response to petition
`Petitioner’s opposition to motion to amend
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`DUE DATE 3……………………………………………….................. July 7,
`2014
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`Patent owner’s reply to petitioner opposition to motion to amend
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`DUE DATE 4………………………………………………………... July 25, 2014
`Petitioner’s motion for observation regarding cross-examination of reply
`witness
`Motion to exclude evidence
`Request for oral argument
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`DUE DATE 5…………………………………..………………...... August 8, 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…………………………………………………….. August 15, 2014
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`Reply to opposition to motion to exclude
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`5
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`Case IPR2013-00473
`Patent 8,176,267
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`DUE DATE 7…………………………..……………………… September 8, 2014
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`Oral argument (if requested)
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`For PETITIONER:
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
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`
`For PATENT OWNER:
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`IPR23490-0008IP1@fr.com
`PTABInbound@fr.com
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`6
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