Trials@uspto.gov Paper No. 12
`571.272.7822
`Filed: March 10, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`. SEGA OF AMERICA, INC., UBISOFT, INC., KOFAX, INC., and
`CAMBIUM LEARNING GROUP, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`_______________
`
`Case IPR2014-01453
`Patent 5,490,216 C2
`_______________
`
`Before WILLIAM V. SAINDON, DONNA M. PRAISS, and
`PATRICK R. SCANLON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`571.272.7822
`Filed: March 10, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`. SEGA OF AMERICA, INC., UBISOFT, INC., KOFAX, INC., and
`CAMBIUM LEARNING GROUP, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`_______________
`
`Case IPR2014-01453
`Patent 5,490,216 C2
`_______________
`
`Before WILLIAM V. SAINDON, DONNA M. PRAISS, and
`PATRICK R. SCANLON, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`IPR2014-01453
`Patent 5,490,216 C2
`
`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
`Either party may request an initial conference call. To request a
`conference call, the parties should submit a list of dates and times when they
`are available for a call. If an initial conference call is requested, the parties
`should be prepared to discuss any proposed changes to this Scheduling
`Order and any motions the parties anticipate filing during the trial. The
`parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`2
`
`
`
`IPR2014-01453
`Patent 5,490,216 C2
`
`48,756, 48,765–66 (Aug. 14, 2012) for guidance in preparing for an initial
`conference call.
`
`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
`
`
`
`IPR2014-01453
`Patent 5,490,216 C2
`
`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 observation must be a
`
`4
`
`
`
`IPR2014-01453
`Patent 5,490,216 C2
`
`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
`
`
`
`IPR2014-01453
`Patent 5,490,216 C2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ..................................... UPON REQUEST
`
`DUE DATE 1 ............................................................................... June 8, 2015
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................... September 8, 2015
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ October 6, 2015
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... October 27, 2015
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................. November 10, 2015
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. November 17, 2015
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................... December 2, 2015
`Oral argument (if requested)
`
`
`
`6
`
`
`
`IPR2014-01453
`Patent 5,490,216 C2
`
`FOR PETITIONER:
`Eric A. Buresh
`Mark C. Lang
`ERISE IP, P.A.
`Eric.buresh@eriseip.com
`Mark.lang@eriseip.com
`
`FOR PATENT OWNER:
`Sean D. Burdick
`Brett Mangrum
`UNILOC USA, INC.
`Sean.burdick@unilocusa.com
`Brett.mangrum@unilocusa.com
`
`
`7
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