Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 17
`Entered: April 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`Cases1
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`A. DUE DATES
`
`
`1 This order addresses issues that are the same for each case. We exercise
`our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this heading style in subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 17
`Entered: April 25, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
`v.
`
`ROBERT BOSCH LLC,
`Patent Owner.
`
`Cases1
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`A. DUE DATES
`
`
`1 This order addresses issues that are the same for each case. We exercise
`our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this heading style in subsequent papers.
`
`
`
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`
`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 contact the Board within a month of this
`decision if there is a need to discuss proposed changes to this Scheduling
`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).
`
`2
`
`
`
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`2. ADR STATEMENT
`
`The parties are encouraged to discuss promptly 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 the due date identified in the Appendix to this Order,
`that the parties have conferred regarding alternative dispute resolution and
`whether the parties have reached any agreements.
`
`3. 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.
`
`4. 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.
`
`5. 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
`
`
`
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`6. 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.
`
`7. 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.
`
`8. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`9. 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
`
`
`
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`
`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.
`
`
`
`
`
`
`5
`
`
`
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`DUE DATE APPENDIX
`
`ADR STATEMENT DUE .......................................................... May 23, 2016
`
`DUE DATE 1 ............................................................................. .July 22, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... October 24, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................... November 22, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................... December 13, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................... December 23, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................................... January 3, 2017
`Reply to opposition to motion to exclude
`
`6
`
`
`
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`DUE DATE 7 ........................................................................ January 18, 2017
`Oral argument (if requested)
`
`
`7
`
`
`
`IPR2016-00038 (Patent 6,292,974)
`IPR2016-00039 (Patent 7,228,588)
`IPR2016-00040 (Patent 7,484,264)
`IPR2016-00041 (Patent 8,099,823)
`IPR2016-00042 (Patent 8,544,136)
`
`PETITIONER:
`
`Richard M. Koehl
`James R. Klaiber
`David Lansky
`HUGHES HUBBARD & REED LLP
`richard.koehl@hugheshubbard.com
`james.klaiber@hugheshubbard.com
`david.lansky@hugheshubbard.com
`
`
`
`PATENT OWNER:
`
`Enrique Iturralde
`SHEARMAN & STERLING LLP
`Enrique.Iturralde@shearman.com
`
`
`
`8
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