Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 21, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FCA US LLC,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01118
`Patent 5,463,374
`____________
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: October 21, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FCA US LLC,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01118
`Patent 5,463,374
`____________
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2015-01118
`Patent 5,463,374
`
`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
`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 this Scheduling Order and any motions the parties
`anticipate filing during the trial.
`
`2
`
`
`
`IPR2015-01118
`Patent 5,463,374
`
`2. DUE DATE 1
`The patent owner may file a response to the petition (37 C.F.R.
`§ 42.120). The patent owner must file any such response 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 by
`DUE DATE 2.
`
`4. DUE DATE 3
`None.1
`
`5. DUE DATE 4
`a.
`The patent owner 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.
`
`
`1 Because the challenged patent has expired and may not be amended,
`no due date is being set for DUE DATE 3. The numbering of due dates
`remains the same, however, to maintain consistency with the exemplary
`numbering in Appendix A-1 of the Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,768–69.
`
`3
`
`
`
`IPR2015-01118
`Patent 5,463,374
`
`6. DUE DATE 5
`a.
`The petitioner 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
`
`
`
`IPR2015-01118
`Patent 5,463,374
`
`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
`
`
`
`IPR2015-01118
`Patent 5,463,374
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ........ November 19, 2015 at 11:00 AM ET
`
`DUE DATE 1 ....................................................................... January 11, 2016
`Patent owner’s response to the petition
`
`DUE DATE 2 ......................................................................... March 30, 2016
`Petitioner’s reply to patent owner’s response to petition
`
`DUE DATE 3 ............................................................................................ N/A
`
`DUE DATE 4 ........................................................................... April 25, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .............................................................................. May 9, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ May 16, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .............................................................................. June 1, 2016
`Oral argument (if requested)
`
`6
`
`
`
`
`
`IPR2015-01118
`Patent 5,463,374
`
`PETITIONER:
`Frank C. Cimino, Jr.
`Megan S. Woodworth
`VENABLE LLP
`fccimino@Venable.com
`mswoodworth@Venable.com
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`Holly J. Atkinson
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`holly.atkinson@aacendalaw.com
`
`7
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