Paper 12
`Date: May 9, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`HARMONIX MUSIC SYSTEMS, INC.
`Petitioner
`
`v.
`
`PRINCETON DIGITAL IMAGE CORPORATION
`Patent Owner
`_______________
`
`Case IPR2014-00155
`Patent 5,513,129
`_______________
`
`
`Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`OSINSKI, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`Date: May 9, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`HARMONIX MUSIC SYSTEMS, INC.
`Petitioner
`
`v.
`
`PRINCETON DIGITAL IMAGE CORPORATION
`Patent Owner
`_______________
`
`Case IPR2014-00155
`Patent 5,513,129
`_______________
`
`
`Before BENJAMIN D. M. WOOD, MICHELLE R. OSINSKI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`OSINSKI, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2014-00155
`Patent 5,513,129
`
`A. DUE DATES
`
`This order sets due dates for the parties to take action after institution of the
`proceeding. 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, below).
`
`The parties are reminded that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,772 (Aug. 14, 2012)
`(Appendix D), apply to this proceeding. 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. INITIAL CONFERENCE CALL
`An initial conference call with the Board is scheduled for 2:00 PM Eastern
`Time on Monday, June 9, 2014. The parties are directed to the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) for guidance in
`preparing for the initial conference call, and should be prepared to discuss any
`proposed changes to this Scheduling Order and any motions the parties anticipate
`filing during the trial.
`
`2
`
`
`
`IPR2014-00155
`Patent 5,513,129
`
`2. 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 in the response will be
`deemed waived.
`
`3. 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.
`
`4. 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.
`
`5. DUE DATE 4
`a.
`Each party must file any motion for an observation on the cross-
`examination testimony of a reply witness (see section C, below) 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.
`
`6. DUE DATE 5
`a.
`Each party must file any response to an observation on cross-
`examination testimony by DUE DATE 5.
`
`3
`
`
`
`IPR2014-00155
`Patent 5,513,129
`
`
`Each party must file any opposition to a motion to exclude evidence
`b.
`by DUE DATE 5.
`
`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
`
`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.
`
`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 Patent 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.
`
`
`
`
`
`4
`
`
`
`IPR2014-00155
`Patent 5,513,129
`
`
`
`
`DUE DATE APPENDIX
`INITIAL CONFERENCE CALL…………………….. June 9, 2014 at 2:00 PM ET
`
`DUE DATE 1……………………………………………………….... July 28, 2014
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2……………………………………………………. October 14, 2014
`
`Petitioner’s reply to patent owner response to petition
`
`
`Petitioner’s opposition to motion to amend
`
`
`DUE DATE 3………………………………………………… November 14, 2014
`
`Patent owner’s reply to petitioner opposition to motion to amend
`
`DUE DATE 4…………………………………………………… December 8, 2014
`
`Petitioner’s motion for observation regarding cross-examination
`of reply witness
`Motion to exclude evidence
`
`Request for oral argument
`
`
`
`DUE DATE 5………………………………………………….. December 19, 2014
`
`Patent owner’s response to observation
`
`Opposition to motion to exclude
`
`
`DUE DATE 6……………………………………………………… January 5, 2014
`
`Reply to opposition to motion to exclude
`
`
`DUE DATE 7…………………………………………………… January 15, 2015
`
`Oral argument (if requested)
`
`5
`
`
`
`IPR2014-00155
`Patent 5,513,129
`
`FOR PETITIONER:
`
`Linda Jean Thayer
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`linda.thayer@finnegan.com
`
`rachel.emsley@finnegan.com
`
`FOR PATENT OWNER:
`
`Dr. Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Robert R. Axenfeld
`O’KELLY ERNST & BIELLI, LLC
`raxenfeld@oeblegal.com
`
`
`6
`
`
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