Trials@uspto.gov
`571-272-7822
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` Paper No. 7
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` Entered: February 11, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRECISELEY MICROTECHNOLOGY CORP.,
`Petitioner,
`
`v.
`
`DICON FIBEROPTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01728
`Patent 6,838,738 B1
`____________
`
`
`
`Before LORA M. GREEN, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 7
`
`
`
` Entered: February 11, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRECISELEY MICROTECHNOLOGY CORP.,
`Petitioner,
`
`v.
`
`DICON FIBEROPTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01728
`Patent 6,838,738 B1
`____________
`
`
`
`Before LORA M. GREEN, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`IPR2015-01728
`Patent 6,838,738 B1
`
`
`
`I. 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). In
`addition, any request for oral argument should be filed by original DUE
`DATE 4 as set forth in DUE DATE APPENDIX.
`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.
`
`A. INITIAL CONFERENCE CALL
`The parties are directed to contact the Board within a month of this
`decision if there is a need to discuss proposed changes to this Scheduling
`2
`
`
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`IPR2015-01728
`Patent 6,838,738 B1
`
`
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`Order or proposed motions. To request a conference call, the parties should
`submit a list of dates and times when they are available for a call. If an
`initial conference call is requested, the parties should be prepared to discuss
`any proposed changes to this Scheduling Order and any motions the parties
`anticipate filing during the trial. The parties are directed to the Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,765–66, for guidance in preparing
`for the initial conference call.
`
`B. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`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.
`
`C. 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.
`
`D. 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.
`
`3
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`IPR2015-01728
`Patent 6,838,738 B1
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`
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`E. DUE DATE 4
`1.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section III, below) by
`DUE DATE 4.
`2.
`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.
`
`F. DUE DATE 5
`1.
`Each party must file any reply to an observation on cross-
`examination testimony by DUE DATE 5.
`2.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 5.
`
`G. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`H. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`II. 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
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`IPR2015-01728
`Patent 6,838,738 B1
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`Cross-examination ends no later than a week before the filing
`2.
`date for any paper in which the cross-examination testimony is expected to
`be used. Id.
`
`III. 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. 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.
`
`IV. MOTION TO AMEND
`
`Under 37 C.F.R. §§ 42.24 and 42.121, a motion to amend, if filed in
`this proceeding, as well as Petitioner’s opposition to the motion to amend,
`each are limited to twenty-five (25) pages; patent owner’s reply to the
`opposition to the motion to amend is limited to twelve (12) pages; and the
`claim listing may be contained in an appendix to the motion to amend, and
`does not count toward the page limit of the motion. See Amendments to the
`Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80
`Fed. Reg. 28,561, 28,565–66 (Final Rule) (May 19, 2015).
`
`5
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`IPR2015-01728
`Patent 6,838,738 B1
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`V. PETITIONER’S REPLY
`
`Under 37 C.F.R. § 42.24(c), petitioner’s reply to patent owner’s
`response is limited to twenty-five (25) pages. See Amendments to the Rules
`of Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
`at 28,565.
`
`VI. PROTECTIVE ORDER
`
`No protective order has been entered in this proceeding. The parties
`are reminded of the requirement for a protective order when filing a motion
`to seal. 37 C.F.R. § 42.54. If the parties have agreed to a proposed
`protective order, including the Standing Default Protective Order, 77 Fed.
`Reg. 48,756, App. B (Aug 14, 2012), they should file a signed copy of the
`proposed protective order with the motion to seal. If the parties choose to
`propose a protective order other than, or departing from, the default Standing
`Protective Order, they must submit a joint, proposed protective order,
`accompanied by a red-lined version based on the default protective order in
`Appendix B to the Board’s Office Patent Trial Practice Guide.
`
`
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`6
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`IPR2015-01728
`Patent 6,838,738 B1
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`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ........................................................................... April 25, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................. July 11, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .......................................................................... August 9, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................ August 30, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................. September 13, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. September 20, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................ October 6, 2016
`Oral argument (if requested)
`
`
`
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`7
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`8
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`IPR2015-01728
`Patent 6,838,738 B1
`
`
`
`PETITIONER:
`
`Robert P. Lord
`Tammy J. Terry
`Jeffrey R. Guinn
`OSHA LIANG LLP
`lord@oshaliang.com
`terry@oshaliang.com
`guinn@oshaliang.com
`
`PATENT OWNER:
`
`Erica D. Wilson
`Eric S. Walters
`Philip H. Albert
`James Hsue
`DAVIS WRIGHT TREMAINE LLP
`ericawilson@dwt.com
`ericwalters@dwt.com
`philipalbert@dwt.com
`JamesHsue@dwt.com
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