`571-272-7822
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` Paper 8
`Entered: December 31, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01030
`Patent 5,652,084
`____________
`
`
`Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
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`
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`SCHEDULING ORDER
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`
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`IPR2014-01030
`Patent 5,652,084
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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
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`the proceeding. The parties may stipulate to different dates for DUE DATES
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`1 through 5 (earlier or later, but no later than DUE DATE 6). A notice of the
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`stipulation, specifically identifying the changed due dates, must be promptly
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`filed. The parties may not stipulate to an extension of DUE DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect of
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`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-examination
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`(37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the evidence and
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`cross-examination 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,
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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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`1. INITIAL CONFERENCE CALL
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`The parties are directed to the Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) for guidance in preparing for
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`the initial conference call, and should be prepared to discuss any proposed
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`changes to this Scheduling Order and any motions the parties anticipate filing
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`during the trial.
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`2
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`IPR2014-01030
`Patent 5,652,084
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`2. DUE DATE 1
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`The patent owner may file—
`
`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`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
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`DUE DATE 1. If the patent owner elects not to file anything, the patent
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`owner must arrange a conference call with the parties and the Board. The
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`patent 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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`3. 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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`4. 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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`5. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the cross-
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`examination testimony of a reply witness (see Section C, below) by DUE
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`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 DUE
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`DATE 4.
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`3
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`IPR2014-01030
`Patent 5,652,084
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`6. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`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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`7. 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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`8. 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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`B. 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 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 parties
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`with a mechanism to draw the Board’s attention to relevant cross-examination
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`testimony of a reply witness because no further substantive paper is permitted
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`after the reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,768 (Aug. 14, 2012). The observation must be a concise statement of the
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`4
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`IPR2014-01030
`Patent 5,652,084
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`relevance of precisely identified testimony to a precisely identified argument
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`or portion of an exhibit. Each observation should not exceed a single, short
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`paragraph. The opposing party may respond to the observation. Any
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`response must be equally concise and specific.
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`5
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`IPR2014-01030
`Patent 5,652,084
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ................ January 28, 2015 at 2:00 PM ET
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`DUE DATE 1 ......................................................................... March 10, 2015
`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 18, 2015
`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 ............................................................................ June 17, 2015
`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ................................................................................ July 8, 2015
`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 .............................................................................. July 22, 2015
`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ............................................................................. July 29, 2015
`Reply to opposition to motion to exclude
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`DUE DATE 7 ......................................................................... August 12, 2015
`Oral argument (if requested)
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`6
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`IPR2014-01030
`Patent 5,652,084
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`PETITIONER:
`
`David O’Dell
`david.odell.ipr@haynesboone.com
`
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
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`PATENT OWNER:
`
`Andriy Lytvyn
`andriy.lytvyn@smithhopen.com
`
`Anton J. Hopen
`anton.hopen@smithhopen.com
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`7
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