Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 22
`Entered: November 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-003141
`Patent 7,477,624 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`1 Case IPR2015-01577 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`Paper 22
`Entered: November 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`QUALCOMM INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-003141
`Patent 7,477,624 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`1 Case IPR2015-01577 has been joined with this proceeding.
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`An initial conference call is not scheduled in this case. A party may
`request an initial conference call within 25 days after the institution of trial.
`A party requesting an initial conference call shall: (a) identify the proposed
`motions, if any, to be discussed during the call; and (b) propose two or more
`dates and times when both parties are available for the call. When an initial
`conference call is scheduled in response to a request, 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 the schedule in this
`proceeding.
`
`2. Protective Order
`A protective order will not be entered in this proceeding unless the
`parties file one and the Board approves it. The parties are encouraged to
`adopt the Board’s default protective order if a protective order is necessary.
`See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,769 (App. B). If the parties choose to propose a protective order
`deviating from the default protective order, they must submit the proposed
`protective order along with a marked-up comparison of the proposed and
`default protective orders showing the differences. If either party files a
`motion to seal before entry of a protective order, a proposed protective order
`should be presented as an exhibit to the motion that has been discussed with
`the opposing party and, preferably, be jointly proposed. If the protective
`order is not jointly proposed, the proponent of the order should identify
`where the parties differ in the proposed language of the order.
`
`2
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`The Board has a strong interest in promoting public accessibility to
`the proceedings. If a party seeks to redact information from documents filed
`in this proceeding in accordance with a protective order, the redactions must
`be limited to isolated passages consisting entirely of confidential
`information, and the thrust of the underlying argument or evidence must
`remain clearly discernible.
`Information subject to a protective order will nevertheless become
`public if identified in a final written decision in this proceeding. A motion
`to expunge information subject to a protective order will not prevail
`necessarily over the public interest in maintaining a complete and
`understandable file history. See Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,761.
`
`3. Depositions
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (App. D), apply to
`this proceeding. The Board may impose an appropriate sanction for failure
`to adhere to the Testimony Guidelines. See 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.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties shall cite to the filed
`exhibit rather than submitting another copy of the same transcript.
`
`3
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`
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`IPR2015-00314
`Patent 7,477,624 B2
`
`
`4. Discovery Disputes
`Parties are encouraged to resolve disputes relating to discovery on
`their own and in accordance with the precepts of securing a just, speedy, and
`inexpensive resolution, as set forth in 37 C.F.R. § 42.1(b). To the extent that
`a dispute arises between the parties relating to discovery, the parties shall
`meet and confer to resolve such a dispute before contacting the Board. If
`attempts to resolve the dispute fail, a party may request a conference call
`with the Board and the other party in order to seek authorization to move for
`relief.
`In any request for a conference call with the Board to resolve a
`discovery dispute, the requesting party shall: (a) confirm that it has
`conferred in good faith with the other party in an effort to resolve the
`dispute; (b) identify with specificity the issues for which agreement has not
`been reached, but refrain from arguing the merits of the request; (c) identify
`the precise relief to be sought; and (d) propose two or more dates and times
`when both parties are available for the call.
`
`5. Motion to Amend
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. See 37 C.F.R. § 42.121(a). The parties are
`directed to the Board’s website for representative decisions relating to
`Motions to Amend, among other topics, available at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`
`6. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`
`4
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`Cross-examination begins after any supplemental
`a.
`evidence is due. See 37 C.F.R. § 42.53(d)(2).
`b.
`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. See id.
`
`7. 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. at 48,768. 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.
`
`B. 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 dates, 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-
`
`5
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony (see section A.6, above).
`In light of the joinder of IPR2015-01577 with IPR2015-00314 and
`pursuant to 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c), we extend the
`time for judgment in this proceeding by three months, i.e., to September 10,
`2016.
`
`1. 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.
`2. 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.
`3. 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.
`4. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section A.7, above) by
`DUE DATE 4.
`
`6
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`Each party must file any motion to exclude evidence
`b.
`(37 C.F.R § 42.64(c)) and any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 4.
`5. 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.
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`
`
`
`
`
`7
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ......................................................................... January 7, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................... March 7, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. April 7, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................... April 21, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .............................................................................. May 5, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ May 12, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ May 26, 2016
`Oral argument (if requested)
`
`
`
`
`8
`
`
`
`IPR2015-00314
`Patent 7,477,624 B2
`
`
`
`
`PETITIONER:
`
`Lori A. Gordon
`Robert E. Sokohl
`Jeffrey T. Helvey
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-PTAB@skgf.com
`rsokohl-PTAB@skgf.com
`jhelvey-PTAB@skgf.com
`
`Nathan Rees
`Richard S. Zembek
`Eric Hall
`R. Ross Viguet
`NORTON ROSE FULBRIGHT US LLP
`nate.rees@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`eric.hall@nortonrosefulbright.com
`ross.viguet@nortonrosefulbright.com
`
`PATENT OWNER:
`
`Gregory S. Donahue
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`docketing@dpelaw.com
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`
`9
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