`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 16
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` Entered: April 9, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING
`COMPANY OF AMERICA,
`Petitioner,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00021
`Patent 7,202,843 B2
`____________
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2015-00021
`Patent 7,202,843 B2
`
`
`
`On April 7, 2015, the initial conference call was held between counsel for
`the respective parties and Judges Medley, Moore, and Shaw.1
`Schedule
`Petitioner requested that we reset the date for hearing to December 8, 2015.
`We explained that the Board did not have resources to accommodate a hearing that
`day, but offered to hold a telephonic hearing, which Petitioner declined.
`Accordingly, no change to the hearing date will be made. We further explained
`that we would modify the Scheduling Order to be consistent with United States
`Patent & Trademark Office Director Michelle K. Lee’s March 27, 2015 blog2
`regarding changes to AIA proceedings effective immediately. The attached
`Scheduling Order reflects those changes and replaces the March 18, 2015
`Scheduling Order.
`To the extent issues arise with DATES 1-5 identified in the attached
`Scheduling Order, the parties are reminded that, without obtaining prior
`authorization from the Board, they may stipulate to different dates for DATES 1-5,
`as provided in the Scheduling Order, by filing an appropriate notice with the
`Board. The parties may not stipulate to any other changes to the Scheduling Order.
`Motions
`Neither party seeks authorization to file a motion at this time. As explained,
`if Patent Owner determines that it will file a motion to amend, Patent Owner must
`
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`1 A court reporter also was present.
`2 http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for
`2
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`IPR2015-00021
`Patent 7,202,843 B2
`
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`arrange a conference call no later than two weeks prior to DUE DATE 1 with the
`Board and opposing counsel to discuss the proposed motion to amend. See 37
`C.F.R. § 42.121(a).
`The parties were reminded that if they seek authorization to file a motion not
`contemplated per the Scheduling Order, the party requesting such authorization
`must arrange a conference call with opposing counsel and the Board.
`Rehearing Request
`Petitioner filed a motion requesting rehearing of the Decision to Institute
`
`inter partes review. Paper 12. During the call, Patent Owner requested
`authorization to file an opposition to the motion. As explained, Patent Owner is
`not authorized to file an opposition at this time. We also reminded the parties that
`a rehearing request does not toll times for taking action. 37 C.F.R. § 42.71(d).
`Settlement
`The parties have nothing to report with respect to settlement.
`Order
`
`It is
`ORDERED that no motions are authorized at this time;
`FURTHER ORDERED that Patent Owner’s request to file an opposition to
`Petitioner’s motion requesting rehearing is denied; and
`FURTHER ORDERED that the attached Scheduling Order replaces the
`March 15, 2015 Scheduling Order.
`
`
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`3
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`
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`IPR2015-00021
`Patent 7,202,843 B2
`
`
`
`
`For Petitioner:
`Anthony F. Lo Cicero
`Brian A. Comack
`AMSTER ROTHSTEIN & EBENSTEIN LLP
`alocicero@arelaw.com
`Sharp-843IPR@arelaw.com
`
`For Patent Owner:
`
`Wayne M. Helge
`Donald L. Jackson
`Michael R. Casey
`DAVIDSON BERQUIST JACKSON & GOWDY LLP
`whelge@dbjg.com
`djackson@dbjg.com
`mcasey@dbjg.com
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`4
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`IPR2015-00021
`Patent 7,202,843 B2
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`SCHEDULING ORDER
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`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.
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`5
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`IPR2015-00021
`Patent 7,202,843 B2
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`1. ADR STATEMENT
`
`The parties are encouraged to discuss promptly alternative means for
`
`resolving their disputes regarding the subject matter of this proceeding. To
`advance the opportunities for early disposition, petitioner is encouraged to notify
`the Board, by the due date identified in the Appendix to this Order, that the parties
`have conferred regarding alternative dispute resolution and whether the parties
`have reached any agreements.
`
`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.
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`6
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`IPR2015-00021
`Patent 7,202,843 B2
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`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.
`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.
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`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
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`7
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`IPR2015-00021
`Patent 7,202,843 B2
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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.
`
`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 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.
`
`D. MOTION TO AMEND
`
`Notwithstanding the page limits set forth in 37 C.F.R. § 42.24, we hereby
`expand those limits for the following papers: a motion to amend, if filed in this
`proceeding, as well as petitioner’s opposition to the motion to amend, each are
`limited to twenty-five (25) pages; patent owner’s reply to the opposition to the
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`8
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`IPR2015-00021
`Patent 7,202,843 B2
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`motion to amend is limited to twelve (12) pages; and the claim listing may be
`contained in an appendix to the motion to amend, and does not count toward the
`page limit of the motion. See 37 C.F.R. § 42.5(b).
`E.
`PETITIONER’S REPLY
`
`Notwithstanding the page limit set forth in 37 C.F.R. § 42.24(c), petitioner’s
`reply brief to patent owner response is limited to twenty-five (25) pages. See 37
`C.F.R. § 42.5(b).
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`9
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`IPR2015-00021
`Patent 7,202,843 B2
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`DUE DATE APPENDIX
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`ADR STATEMENT DUE ......................................................... April 29, 2015
`
`DUE DATE 1 ............................................................................ June 11, 2015
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................... September 3, 2015
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ........................................................................ October 1, 2015
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... October 22, 2015
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
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`DUE DATE 5 .................................................................... November 5, 2015
`Response to observation
`Opposition to motion to exclude
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`DUE DATE 6 .................................................................. November 12, 2015
`Reply to opposition to motion to exclude
`10
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`IPR2015-00021
`Patent 7,202,843 B2
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`DUE DATE 7 ..................................................................... December 1, 2015
`Oral argument (if requested)
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`11
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