Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: March 4, 2016
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TCL CORPORATION, TCL COMMUNICATION TECHNOLOGY
`HOLDINGS, LTD., TCT MOBILE LIMITED, TCT MOBILE INC.,
`and TCT MOBILE (US), INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`
`Case IPR2015-01761
`Patent RE43,931 E
`
`
`
`Before BENJAMIN D. M. WOOD, PATRICK R. SCANLON, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: March 4, 2016
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TCL CORPORATION, TCL COMMUNICATION TECHNOLOGY
`HOLDINGS, LTD., TCT MOBILE LIMITED, TCT MOBILE INC.,
`and TCT MOBILE (US), INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`
`Case IPR2015-01761
`Patent RE43,931 E
`
`
`
`Before BENJAMIN D. M. WOOD, PATRICK R. SCANLON, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2015-01761
`Patent RE43,931 E
`
`
`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, any motions the parties anticipate filing
`during the trial, the status of any settlement discussions, and preferred
`location for oral argument.
`
`2
`
`
`
`IPR2015-01761
`Patent RE43,931 E
`
`
` The parties are encouraged to promptly discuss alternative means for
`resolving their disputes regarding the subject matter of this proceeding. To
`advance the opportunities for early disposition, Petitioner is encouraged to
`notify the Board by email, before the initial conference call, that the parties
`have conferred regarding alternative dispute resolution and whether the
`parties have reached any agreements.
`
`2. 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.
`
`3. 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.
`
`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.
`
`3
`
`
`
`IPR2015-01761
`Patent RE43,931 E
`
`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.
`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.
`
`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).
`
`4
`
`
`
`IPR2015-01761
`Patent RE43,931 E
`
`
`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.
`
`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
`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.
`
`D. MOTION TO AMEND
`Under 37 C.F.R. §§ 42.24 and 42.121, a motion to amend, if filed in
`this proceeding, and the petitioner’s opposition to the motion to amend are
`limited to twenty-five (25) pages; the 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, which does not count toward
`the page limit of the motion. See 37 C.F.R. §§ 42.24, 42.121(b);
`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).
`Patent Owner is reminded that it must confer with the Board before
`filing a motion to amend. 37 C.F.R. § 42.121(a). Patent Owner should
`
`5
`
`
`
`IPR2015-01761
`Patent RE43,931 E
`
`contact the Board to request the conference in sufficient time to ensure that
`the conference is conducted at least one week before DUE DATE 1.
`
`E. PETITIONER’S REPLY
`Under 37 C.F.R. § 42.24(c), the petitioner’s reply brief to the patent
`owner’s response is limited to twenty-five (25) pages. See 37 C.F.R.
`§ 42.24(c); Amendments to the Rules of Practice for Trials Before the Patent
`Trial and Appeal Board, 80 Fed. Reg. at 28,565.
`
`F. OBJECTION TO EVIDENCE
`Under 37 C.F.R. § 42.64(b)(1), once trial has been instituted, any
`objection must be filed within five business days of service of evidence to
`which the objection is directed. The objection must identify the grounds for
`the objection with sufficient particularity to allow correction in the form of
`supplemental evidence. See 37 C.F.R. § 42.64(b)(1); Amendments to the
`Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80
`Fed. Reg. at 28,565. The party relying on evidence to which an objection is
`timely served may respond to the objection by serving supplemental
`evidence within ten business days of service of the objection. See 37 C.F.R.
`§ 42.64(b)(2); Amendments to the Rules of Practice for Trials Before the
`Patent Trial and Appeal Board, 80 Fed. Reg. at 28,565.
`
`
`
`
`6
`
`
`
`IPR2015-01761
`Patent RE43,931 E
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ....................... April 6, 2016, 2:00 p.m. ET
`
`DUE DATE 1 ............................................................................ June 20, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. September 20, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... October 20, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................. November 10, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................. November 25, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ..................................................................... December 1, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ................................................................... December 15, 2016
`Oral argument (if requested)
`
`
`7
`
`
`
`IPR2015-01761
`Patent RE43,931 E
`
`
`PETITIONER:
`Stephen S. Korniczky
`Martin R. Bader
`David A. Randall
`Nam H. Kim
`Hector A. Agdeppa
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`LegalTm-TCL-IPRs@sheppardmullin.com
`
`PATENT OWNER:
`W. Todd Baker
`Sameer Gokhale
`Lisa Mandrusiak
`Alex Kuo
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketBaker@oblon.com
`CPDocketGokhale@oblon.com
`CPDocketMandrusiak@oblon.com
`CPDocketKuo@oblon.com
`
`
`
`8
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