Paper 8
`Date: August 24, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-00958
`Patent 8,585,136 B2
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and JAMES A. WORTH,
`Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Date: August 24, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Case IPR2015-00958
`Patent 8,585,136 B2
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and JAMES A. WORTH,
`Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00958
`Patent 8,585,136 B2
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`Unless at least one of the parties requests otherwise, we will not conduct an
`initial conference call as described in the Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). In lieu of such a call, we
`instruct the parties as follows:
`(1) If a party wishes to request an initial conference call, that party
`shall request the call no later than 25 days after the institution of
`trial;
`(2) A request for a conference call shall include: (a) a list of proposed
`motions, if any, to be discussed during the call and (b) a list of dates and
`times when the parties are available for the call; and
`(3) The parties shall be prepared to discuss during the initial conference call
`their concerns, if any, relating to the schedule in this proceeding as set
`forth below.
`Absent good cause shown, we will not conduct an initial conference call later
`than 30 days after the institution of a trial.
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties file
`one and the Board approves it. If either party files a motion to seal before entry
`of a protective order, a jointly proposed protective order should be presented as
`an exhibit to the motion. We encourage the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See
`Default Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, App. B (Aug. 14, 2012). If the parties choose to propose a protective
`order deviating from the default protective order, they must submit the proposed
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`IPR2015-00958
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`Patent 8,585,136 B2
`protective order jointly along with a marked-up comparison of the proposed and
`default protective orders showing the differences.
`The Board has a strong interest in the public availability of the
`proceedings. We advise the parties that redactions to documents filed in this
`proceeding should be limited strictly to isolated passages consisting entirely of
`confidential information, and that the thrust of the underlying argument or
`evidence must be clearly discernible from the redacted versions. We also advise
`the parties that information subject to a protective order will become public if
`identified in a final written decision in this proceeding, and that a motion to
`expunge the information will not necessarily prevail 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. Motions to Amend
`Patent Owner may file a motion to amend without prior authorization from
`the Board. Nevertheless, the Patent Owner must confer with the Board before
`filing such a motion. 37 C.F.R. § 42.121(a). We direct the parties to the Board’s
`website for representative decisions relating to Motions to Amend among other
`topics. The parties may access these representative decisions at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`The page limit for motions to amend, as set forth in 37 C.F.R. § 42.24, has
`recently changed to 25 pages and the claim listing may be contained in an
`appendix to the motion. 37 C.F.R. §§ 42.24(a)(1)(vi), 42.121(b). For further
`information on all recent rule changes, the parties are directed to Final Rule
`notice as published in the Federal Register on May 19, 2015. Amendments to
`the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80
`Fed. Reg. 28,561 (May 19, 2015). The parties may access this Final Rule notice
`at: http://www.gpo.gov/fdsys/pkg/FR-2015-05-19/pdf/2015-12117.pdf.
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`IPR2015-00958
`Patent 8,585,136 B2
`4. Discovery Disputes
`The Panel encourages the parties to resolve disputes relating to discovery
`on their own and in accordance with the precepts 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) certify that it has conferred with the other
`party in an effort to resolve the dispute; (b) identify with specificity the issues for
`which agreement has not been reached; (c) identify the precise relief to be
`sought; and (d) propose specific dates and times at which both parties are
`available for the conference call.
`5. Depositions
`The parties are advised 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.
`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 who subsequently cite to
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`IPR2015-00958
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`Patent 8,585,136 B2
`portions of the transcript shall cite to the first-filed exhibit rather than submitting
`another copy of the same transcript.
`6. Petitioner’s Reply
`The page limits for replies, as set forth in 37 C.F.R. § 42.24(c), have
`recently changed as follows:
`(1) Replies to patent owner responses to petitions are limited to 25 pages;
`(2) Replies to oppositions (excluding replies to oppositions to Motions to
`Amend) are limited to 5 pages; and
`(3) Replies to oppositions to Motions to Amend are limited to 12 pages.
`See Amendments to the Rules of Practice for Trials Before the Patent Trial
`and Appeal Board, 80 Fed. Reg. at 28,565.
`7. 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.
`
`8. Objection; Motion to Exclude
`The trial rules have been updated recently to require that objections to
`evidence must be filed within the prescribed time periods. 37 C.F.R.
`§ 42.64(b)(1). See Amendments to the Rules of Practice for Trials Before the
`Patent Trial and Appeal Board, 80 Fed. Reg. at 28,565.
`Parties are advised that the Panel will not authorize motions to exclude
`replies alleged to contain arguments that are outside the scope of a proper reply
`under 37 C.F.R. § 42.23(b). The Panel will determine whether a party’s reply is
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`IPR2015-00958
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`Patent 8,585,136 B2
`outside the scope of a proper reply when the Panel reviews all of the parties’
`briefs and prepares a decision.
`9. 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.
`
`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 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.
`1. DUE DATE 1
`The patent owner may file—
`a. A response to the petition (37 C.F.R. § 42.120), and
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`IPR2015-00958
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`Patent 8,585,136 B2
`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.8, above) by DUE
`DATE 4.
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 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 reply to a petitioner 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.
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`IPR2015-00958
`Patent 8,585,136 B2
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
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`IPR2015-00958
`Patent 8,585,136 B2
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`DUE DATE APPENDIX
`
`
`
`DUE DATE 1 ...............................................................................November 16, 2015
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................................February 8, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................................March 7, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ......................................................................................March 28, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................................April 11, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................................April 18, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................................April 21, 2016
`Oral argument (if requested)
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`IPR2015-00958
`Patent 8,585,136 B2
`PETITIONER:
`
`William F. Bahret
`BAHRET & ASSOCIATES LLC
`bahret@bahretlaw.com
`
`Stephen F. Rost
`TAFT STETTINIUS & HOLLISTER LLP
`SRost@taftlaw.com
`
`PATENT OWNER:
`
`Thomas N. Young
`YOUNG BASILE HANLON & MACFARLANE P.C.
`litigation@youngbasile.com
`
`Timothy Eagle
`VARNUM RIDDERING SCHMIDT & HOWLETT LLP
`teeagle@varnumlaw.com
`
`
`
`10
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