Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 9
`Entered: April 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DUKANE CORPORATION,
`Petitioner,
`
`v.
`
`HERRMANN ULTRASCHALLTECHNIK GMBH & CO., KG,
`Patent Owner.
`____________
`
`Case IPR2016-00066
`Patent 8,702,883 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, BRIAN P. MURPHY, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`571-272-7822
`
`
`Paper No. 9
`Entered: April 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DUKANE CORPORATION,
`Petitioner,
`
`v.
`
`HERRMANN ULTRASCHALLTECHNIK GMBH & CO., KG,
`Patent Owner.
`____________
`
`Case IPR2016-00066
`Patent 8,702,883 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, BRIAN P. MURPHY, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`IPR2016-00066
`Patent 8,702,883 B2
`
`
`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).
`
`1. INITIAL CONFERENCE CALL
`The parties are directed to the Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,765–66 (Aug. 14, 2012), for guidance in preparing for the
`initial conference call, and shall be prepared to discuss during the initial
`conference call any proposed changes to this Order and any motions the
`parties anticipate filing during the trial.
`
`
`
`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
`
`
`
`2
`
`
`
`IPR2016-00066
`Patent 8,702,883 B2
`
`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.
`
`
`
`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.
`
`
`
`3
`
`
`
`IPR2016-00066
`Patent 8,702,883 B2
`
`
`
`8. DUE DATE 7
`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).
`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.
`
`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
`
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. See 37 C.F.R. § 42.121(a). Patent Owner
`
`
`
`4
`
`
`
`IPR2016-00066
`Patent 8,702,883 B2
`
`should arrange for a conference call with the panel and opposing counsel at
`least one week before DUE DATE 1 in order to satisfy this requirement.
`
`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).
`
`
`
`E. DISCOVERY DISPUTES
`The panel encourages parties to resolve disputes relating to discovery
`on their own and in accordance with the precepts set forth in 37 C.F.R.
`§ 42.1(b). To the extent that a dispute arises between the parties relating to
`discovery, the parties shall meet and confer to resolve such a dispute before
`contacting the Board. If attempts to resolve the dispute fail, a party may
`request a conference call with the Board and the other party in order to seek
`authorization to move for relief.
`
`In any request for a conference call with the Board to resolve a
`discovery dispute, the requesting party shall: (a) certify that it has conferred
`with the other party in an effort to resolve the dispute; (b) identify with
`specificity the issues on which the parties have not reached agreement;
`(c) identify the precise relief to be sought; and (d) propose specific dates and
`times at which both parties are available for the conference call.
`
`
`
`5
`
`
`
`IPR2016-00066
`Patent 8,702,883 B2
`
`F. DEPOSITIONS
`
`The parties are advised 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.
`
`E. PETITIONER’S REPLY
`
`Under 37 C.F.R. § 42.24(c), petitioner’s reply brief to patent owner
`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.
`
`
`
`6
`
`
`
`IPR2016-00066
`Patent 8,702,883 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ......................... June 2, 2016, 2:30 PM ET
`
`DUE DATE 1 ............................................................................. July 25, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ...................................................................... October 17, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................... November 17, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... December 8, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ..................................................................... December 22, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................... December 29, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ....................................................................... January 12, 2017
`Oral argument (if requested).
`
`7
`
`
`
`
`
`
`
`IPR2016-00066
`Patent 8,702,883 B2
`
`FOR PETITIONER:
`
`Stephen G. Rudisill
`Justin D. Swindells
`Nixon Peabody LLP
`
`srudisill@nixonpeabody.com
`jswindells@nixonpeabody.com
`
`FOR PATENT OWNER:
`
`Alex R. Sluzas
`Ourmazd S. Ojan
`Paul & Paul
`
`info@paulandpaul.com
`
`
`
`
`8
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