`571-272-7822
`
`
`
`
`Paper 37
`Entered: March 12, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GREAT WEST CASUALTY COMPANY,
`BITCO GENERAL INSURANCE CORPORATION, and
`BITCO NATIONAL INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01706
`Patent 7,516,177 B2
`____________
`
`Before MICHAEL W. KIM, KALYAN K. DESHPANDE, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2015-01706
`Patent 7,516,177 B2
`
`
`
`This case returns to us from the U.S. Court of Appeals for the Federal
`
`
`
`Circuit “to allow the Board to consider the patentability of remaining claim 14 of
`
`U.S. Patent No. 7,516,177 under SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348
`
`(2018).” See Intellectual Ventures II LLC v. Great West Cas. Co., Case No. 2017-
`
`2140, slip op. at 2 (Fed. Cir. Jan 25, 2019). A conference call was held on
`
`March 7, 2019, to discuss the timing and substance of this proceeding. For
`
`briefing and evidence, the parties propose the following timelines, word limits, and
`
`permitted evidence:
`
`
`Patent Owner Response
`
`Petitioner Reply
`
`Patent Owner’s Sur-
`Reply
`
`Petitioner’s Proposal
`2500 words; no evidence;
`early May
`
`2500 words, no evidence,
`one month after Patent
`Owner Response
`
`If granted, 1500 words
`and one month after
`Petitioner’s Reply
`
`Patent Owner’s Proposal
`3500 words; evidence,
`probably consisting of an
`expert declaration;
`May 2nd
`1400 words; responsive
`evidence; two months
`after Patent Owner’s
`Response
`1400 words; no evidence;
`one month after
`Petitioner’s Reply
`
`For word limits, even though only one dependent claim is at issue, to afford
`
`each party a full opportunity to be heard, we grant each party the maximum
`
`requested word limits. We also grant Patent Owner’s request to new submit
`
`evidence with its Patent Owner Response, which, according to Patent Owner, will
`
`most likely consist only of an expert declaration. Petitioner may file new evidence
`
`in reply, subject to the provisions of 37 C.F.R. § 42.23(b). Consistent with current
`
`trial practice, Patent Owner is permitted a sur-reply. “The sur-reply may not be
`
`accompanied by new evidence other than deposition transcripts of the cross-
`
`examination of any reply witness.” Trial Practice Guide Update at 14 (Aug. 2018)
`
`(available at https://go.usa.gov/xU7GP). At least one party asked for the
`
`2
`
`
`
`IPR2015-01706
`Patent 7,516,177 B2
`
`
`opportunity to request an oral argument. Such an opportunity is provided. The
`
`
`
`parties indicated that scope of briefing and evidentiary issues may arise. The
`
`parties are encouraged to promptly bring such issues to the panel’s attention when
`
`they occur.
`
`IT IS ORDERED that Patent Owner’s Response is limited to 3500 words,
`
`may include new evidence, and is due May 2, 2019;
`
`IT IS FURTHER ORDERED that Petitioner’s Reply is limited to
`
`2500 words, may include responsive evidence, and is due June 13, 2019;
`
`IT IS FURTHER ORDERED that Patent Owner’s Sur-Reply is limited to
`
`1500 words, may include as evidence deposition transcripts of the cross-
`
`examination of any reply witness only, and is due July 18, 2019;
`
`IT IS FURTHER ORDERED that any requests for oral argument are due
`
`August 1, 2019;
`
`IT IS FURTHER ORDERED that any oral argument will be held on
`
`September 6, 2019; and
`
`IT IS FURTHER ORDERED that the scope of all briefing and evidence is
`
`limited to that necessary to address dependent claim 14, and that the parties may
`
`stipulate to later due dates for briefing, but no later than August 8, 2019.
`
`
`
`
`
`3
`
`
`
`IPR2015-01706
`Patent 7,516,177 B2
`
`PETITIONER:
`
`Joseph Micallef
`iprnotices@sidley.com
`
`Russell Cass
`rcass@sidley.com
`
`Erik Carlson
`ecarlson@sidley.com
`
`PATENT OWNER:
`
`Brenton Babcock
`2brb@knobbe.com
`
`Ted Cannon
`2tmc@knobbe.com
`
`Bridget Smith
`2bzs@knobbe.com
`
`Tim Seeley
`tim@intven.com
`
`James Hietala
`jhietala@intven.com
`
`
`
`
`
`
`
`
`
`4
`
`
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