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Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: November 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`BMC SOFTWARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01176 (Patent 5,978,594)
`Case IPR2015-01211 (Patent 7,617,073 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, BRIAN P. MURPHY, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`1 This Scheduling Order pertains to both of these cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`
`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
`
`

`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`
`2. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`A motion to amend the patent (37 C.F.R. § 42.121).2
`b.
`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—
`a.
`Any reply to the patent owner’s response, and
`Any opposition to the motion to amend.2
`b.
`The petitioner must file any such reply or opposition to the motion to amend
`by DUE DATE 2.
`
`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 3.2
`
`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.
`
`
`2 Because the challenged patent in IPR2015-01176 has expired and may not
`be amended, these actions only pertain to IPR2015-01211.
`
`3
`
`

`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`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.
`
`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.
`
`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-
`
`4
`
`

`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`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.
`
`
`
`
`
`5
`
`

`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .............. December 18, 2015 at 11 AM ET
`
`DUE DATE 1 ..................................................................... February 18, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent3
`
`DUE DATE 2 ............................................................................ May 18, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend3
`
`DUE DATE 3 ............................................................................ June 20, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend3
`
`DUE DATE 4 ............................................................................. July 11, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ............................................................................. July 25, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................................... August 1, 2016
`Reply to opposition to motion to exclude
`
`
`3 Because the challenged patent in IPR2015-01176 has expired and may not
`be amended, these actions only pertain to IPR2015-01211.
`
`6
`
`

`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`DUE DATE 7 ........................................................................ August 19, 2016
`Oral argument (if requested)
`
`7
`
`

`
`IPR2015-01176 (Patent 5,978,594)
`IPR2015-01211 (Patent 7,617,073 B2)
`
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`Mark R. Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`
`PATENT OWNER:
`
`Robert Cote
`Pierre Hubert
`Robert Auchter
`Kevin Schubert
`Phillip Lee
`McKOOL SMITH, P.C.
`rcote@mckoolsmith.com
`phubert@mckoolsmith.com
`rauchter@mckoolsmith.com
`kschubert@mckoolsmith.com
`plee@mckoolsmith.com
`
`
`8

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