Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 13
`Entered: October 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CATERPILLAR, INC.,
`Petitioner,
`
`v.
`
`ESCO CORPORATION,
`Patent Owner.
`
`Case IPR2015-01032
`Patent 8,689,472 B2
`
`
`
`
`
`
`
`
`
`Before PHILIP J. KAUFFMAN, SCOTT A. DANIELS, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`Paper 13
`Entered: October 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CATERPILLAR, INC.,
`Petitioner,
`
`v.
`
`ESCO CORPORATION,
`Patent Owner.
`
`Case IPR2015-01032
`Patent 8,689,472 B2
`
`
`
`
`
`
`
`
`
`Before PHILIP J. KAUFFMAN, SCOTT A. DANIELS, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`IPR2015-01032
`Patent 8,689,472 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) (“Practice
`
`Guide”). 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, Practice Guide, App. B. If the
`
`parties choose to propose a protective order deviating from the default
`
`protective order, they must submit the proposed protective order jointly
`
`2
`
`
`
`IPR2015-01032
`Patent 8,689,472 B2
`
`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 Practice Guide, 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.
`
`4. Discovery Disputes
`
`The Panel encourages 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
`
`3
`
`
`
`IPR2015-01032
`Patent 8,689,472 B2
`
`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
`
`Practice Guide, App. 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 portions of the transcript shall cite to the first-filed exhibit rather than
`
`submitting another copy of the same transcript.
`
`6. 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).
`
`4
`
`
`
`IPR2015-01032
`Patent 8,689,472 B2
`
`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.
`
`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 Practice Guide, 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 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.
`
`5
`
`
`
`IPR2015-01032
`Patent 8,689,472 B2
`
`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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.
`
`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.
`
`5. DUE DATE 5
`
`a.
`
`Each party must file any reply to a petitioner observation on
`
`cross-examination testimony by DUE DATE 5.
`
`6
`
`
`
`IPR2015-01032
`Patent 8,689,472 B2
`
`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
`
`
`
`IPR2015-01032
`Patent 8,689,472 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ......................................................................... January 5, 2016
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... March 25, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................... April 22, 2016
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ May 13, 2016
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ............................................................................ May 27, 2016
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ June 10, 2016
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ June 28, 2016
`
`Oral argument (if requested)
`
`8
`
`
`
`IPR2015-01032
`Patent 8,689,472 B2
`
`PETITIONER:
`
`Anthony M. Gutowski
`Daniel C. Cooley
`Alyssa J. Holtslander
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`tony.gutowski@finnegan.com
`daniel.cooley@finnegan.com
`alyssa.holtslander@finnegan.com
`
`PATENT OWNER:
`
`Charles W. Shifley
`Binal J. Patel
`Timothy J. Rechtien
`Robert H. Resis
`BANNER & WITCOFF, LTD.
`cshifley@bannerwitcoff.com
`bpatel@bannerwitcoff.com
`trechtien@bannerwitcoff.com
`rresis@bannerwitcoff.com
`
`9
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