Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Entered: March 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MCAFEE, INC.,
`Petitioner,
`
`v.
`
`CAP CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01876
`Patent 8,544,078 B2
`____________
`
`
`
`Before DONNA M. PRAISS, PATRICK M. BOUCHER, and J. JOHN LEE,
`Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`571-272-7822
`
`Paper 13
`Entered: March 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MCAFEE, INC.,
`Petitioner,
`
`v.
`
`CAP CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01876
`Patent 8,544,078 B2
`____________
`
`
`
`Before DONNA M. PRAISS, PATRICK M. BOUCHER, and J. JOHN LEE,
`Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`IPR2015-01876
`Patent 8,544,078 B2
`
`
`A. INITIAL CONFERENCE CALL
`
`The parties are directed to contact the Board within a month of this
`
`Order if there is a need to discuss proposed changes to this Order or
`
`proposed motions. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the initial
`
`conference call).
`
`1. Confidential Information
`
`The parties must file confidential information using the appropriate
`
`availability indicator in PRPS (e.g., “Board and Parties Only”), regardless of
`
`whose confidential information it is. It is the responsibility of the party
`
`whose confidential information is at issue, not necessarily the proffering
`
`party, to file the motion to seal, unless the party whose confidential
`
`information is at issue is not a party to this proceeding.
`
`A protective order does not exist in a case until one is filed in the case
`
`and is approved by the Board. If a motion to seal is filed by either party, the
`
`proposed protective order should be presented as an exhibit to the motion.
`
`The motion to seal must include a certification that the moving party has in
`
`good faith conferred or attempted to confer with other affected parties in an
`
`effort to resolve any dispute. See 37 C.F.R. 42.54(a).
`
`The parties are urged to operate under the Board’s default protective
`
`order, should that become necessary. See Default Protective Order, Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. at 48,769–71, App. B.
`
`If the parties choose to propose a protective order deviating from the
`
`default protective order, they should submit the proposed protective order
`
`jointly. A marked-up comparison of the proposed and default protective
`
`orders should be presented as an additional exhibit to the motion to seal, so
`
`2
`
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`
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`IPR2015-01876
`Patent 8,544,078 B2
`
`that differences can be understood readily. The parties should contact the
`
`Board if they cannot agree on the terms of the proposed protective order.
`
`2. Redactions
`
`Redactions should be limited strictly to isolated passages consisting
`
`entirely of confidential information. The thrust of the underlying argument
`
`or evidence must be clearly discernable from the redacted version.
`
`3. Confidential Information in Final Written Decisions
`
`Information subject to a protective order will become public if
`
`identified in a final written decision in this proceeding. A motion to
`
`expunge the information will not necessarily prevail over the public interest
`
`in maintaining a complete and understandable file history. See Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`
`
`B. 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.
`
`Regardless of whether the parties stipulate to a change of DUE
`
`DATE 4, for Board planning purposes, requests for oral argument must be
`
`filed no later than the date set forth in this order for DUE DATE 4.
`
`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-
`
`3
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`IPR2015-01876
`Patent 8,544,078 B2
`
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`
`evidence and cross-examination testimony (see section C, below).
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (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. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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.
`
`2. 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.
`
`3. 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.
`
`4
`
`
`
`
`
`IPR2015-01876
`Patent 8,544,078 B2
`
`4. DUE DATE 4
`
`a.
`
`Each party must file any motion for an observation on the
`
`cross-examination testimony of a reply witness (see section D, below) by
`
`DUE DATE 4.
`
`b.
`
`Each party must file any motion to exclude evidence (37 C.F.R
`
`§ 42.64(c)) by DUE DATE 4.
`
`c. Each party must file any request for oral argument (37 C.F.R.
`
`§ 42.70(a)) by DUE DATE 4. As noted above, DUE DATE 4 is not
`
`extendible with respect to any request for oral argument.
`
`5. 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.
`
`6. DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`7. DUE DATE 7
`
`The oral argument (if requested by either party) is set for DUE
`
`DATE 7.
`
`The panel is available to hear oral argument, if requested, at the
`
`USPTO in the Alexandria, Virginia, office or in the Denver, Colorado,
`
`office. The parties should meet and confer, and jointly file a paper stating
`
`their preference for the hearing location by the due date identified in the
`
`Appendix to this Order. It would be appreciated if the parties would also
`
`5
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`IPR2015-01876
`Patent 8,544,078 B2
`
`indicate how many people they expect to be present at the hearing for each
`
`side. Note that the Board may not be able to honor the parties’ preference of
`
`hearing location due to the availability of hearing room resources. In
`
`addition, if the parties are unable to reach agreement on a hearing location,
`
`the Board shall determine the hearing location and will thereafter notify the
`
`parties accordingly.
`
`C. 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.
`
`D. 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 (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.
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`6
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`IPR2015-01876
`Patent 8,544,078 B2
`
`E. MOTION TO AMEND
`
`
`
`Although the filing of a Motion to Amend is authorized under our
`
`Rules, Patent Owner must confer with the Board before filing any Motion to
`
`Amend. See 37 C.F.R. § 42.121(a). A conference call to satisfy the
`
`requirement of 37 C.F.R. § 42.121(a) must be scheduled no less than ten
`
`(10) business days prior to DUE DATE 1.
`
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`7
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`IPR2015-01876
`Patent 8,544,078 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`HEARING LOCATION STATEMENT ................................... May 20, 2016
`
`DUE DATE 1 ............................................................................. May 20, 2016
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .............................................................................. July 29, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... August 29, 2016
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... September 19, 2016
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .......................................................................... October 3, 2016
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ...................................................................... October 11, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ...................................................................... October 27, 2016
`Oral argument (if requested).
`
`8
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`IPR2015-01876
`Patent 8,544,078 B2
`
`PETITIONER:
`
`James F. Valentine
`Ryan J. McBrayer
`Jonathan Allred
`PERKINS COIE LLP
`JValentine@perkinscoie.com
`RMcBrayer@perkinscoie.com
`JAllred@perkinscoie.com
`
`
`
`PATENT OWNER:
`
`Keith E. Kline, Esq.
`CARR & FERRELL LLP
`Matthew Phillips
`HAUSFELD LLP
`kkline@carrferrell.com
`matthew.phillips@renaissanceiplaw.com
`
`
`
`9
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