Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: March 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-014411 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)2
`_______________
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`1 Case IPR2014-01442 has been consolidated with Case IPR2014-01441.
`2 The parties are not authorized to use a multiple case caption. They must
`file individual papers in each case to which they pertain.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: March 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-014411 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)2
`_______________
`
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`1 Case IPR2014-01442 has been consolidated with Case IPR2014-01441.
`2 The parties are not authorized to use a multiple case caption. They must
`file individual papers in each case to which they pertain.
`
`
`
`IPRs2014-01439, -01441, -01443, -01445, -01446, and -01447
`Patents RE42,913 E; RE43,681 E; RE40,927 E; 7,839,729 B2; 7,196,979
`B2; and 8,416,651 B2
`
`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 5 (earlier or later, but no later than DUE DATE 6). 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 6 and 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
`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
`
`
`
`IPRs2014-01439, -01441, -01443, -01445, -01446, and -01447
`Patents RE42,913 E; RE43,681 E; RE40,927 E; 7,839,729 B2; 7,196,979
`B2; and 8,416,651 B2
`
`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.
`
`3
`
`
`
`IPRs2014-01439, -01441, -01443, -01445, -01446, and -01447
`Patents RE42,913 E; RE43,681 E; RE40,927 E; 7,839,729 B2; 7,196,979
`B2; and 8,416,651 B2
`
`6. DUE DATE 5
`a.
`Each party must file any response to an 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.
`
`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 because 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
`
`4
`
`
`
`IPRs2014-01439, -01441, -01443, -01445, -01446, and -01447
`Patents RE42,913 E; RE43,681 E; RE40,927 E; 7,839,729 B2; 7,196,979
`B2; and 8,416,651 B2
`
`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.
`
`5
`
`
`
`IPRs2014-01439, -01441, -01443, -01445, -01446, and -01447
`Patents RE42,913 E; RE43,681 E; RE40,927 E; 7,839,729 B2; 7,196,979
`B2; and 8,416,651 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ................. April 14, 2015 at 2:00 P.M. ET
`
`DUE DATE 1 ............................................................................ June 12, 2014
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. September 14, 2015
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... October 13, 2015
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................... November 2, 2015
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................. November 16, 2015
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. November 23, 2015
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ..................................................................... December 7, 2015
`Oral argument (if requested)
`
`
`
`6
`
`
`
`IPRs2014-01439, -01441, -01443, -01445, -01446, and -01447
`Patents RE42,913 E; RE43,681 E; RE40,927 E; 7,839,729 B2; 7,196,979
`B2; and 8,416,651 B2
`
`
`
`
`For PETITIONER:
`
`
`Alan A. Limbach
`Brent K. Yamashita
`DLA PIPER, LLP
`Brent.yamashita@dlapiper.com
`Alan.kimbach@dlapiper.com
`
`
`
`For PATENT OWNER:
`
`
`Thomas Engellenner
`Reza Mollaaghababa
`Andy Chan
`Yue (Lily) Li
`Andrew Schultz
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Theodosios Thomas
`OPTICAL DEVICES, LLC
`ted.thomas@optical-devices.com
`
`
`7
`
`
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