Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: July 1, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`
`
`
`
`
`Cases1
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`
`
`
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`1 This Scheduling Order applies to each case. The parties are not authorized
`to use this heading style.
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: July 1, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`
`
`
`
`
`Cases1
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`
`
`
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`1 This Scheduling Order applies to each case. The parties are not authorized
`to use this heading style.
`
`
`
`
`
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`A. DUE DATES
`This order sets due dates for the parties to take action after institution
`of these proceedings. The parties may stipulate to different dates for DUE
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6) for any
`of these proceedings.2 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, with respect to any of these proceedings. See
`
`
`2 The parties may not change DUE DATE 4 with respect to the requirement
`for requesting oral argument, without the express permission of the panel.
`
`2
`
`
`
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`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. 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, but only after first conferring
`with the Board (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 33
`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.
`
`
`3 In a proceeding lacking a Motion to Amend, Due Date 3 would be moot, and
`the panel may advance Due Dates 4–7 for that proceeding.
`
`3
`
`
`
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 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).
`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.
`
`4
`
`
`
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`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
`
`
`
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................. .September 27, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................... December 23, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ January 30, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... February 20, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ............................................................................ March 6, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................................... March 13, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .......................................................................... March 27, 2017
`Oral argument (if requested)
`
`
`6
`
`
`
`Cases IPR2016-00331 & IPR2016-00332
`Patent 8,504,696 B2
`
`PETITIONER:
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`tbroughan@sidley.com
`iprnotices@sidley.com
`
`PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`PH-VirnetX-IPR@paulhastings.com
`
`
`
`7
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