Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 14
`Entered: June 27, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00364
`Patent 9,043,093 B2
`____________
`
`
`
`Before BENJAMIN D. M. WOOD, JENNIFER MEYER CHAGNON, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 14
`Entered: June 27, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00364
`Patent 9,043,093 B2
`____________
`
`
`
`Before BENJAMIN D. M. WOOD, JENNIFER MEYER CHAGNON, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2016-00364
`Patent 9,043,093 B2
`
`
`A. GENERAL INSTRUCTIONS
`
`1. Initial Conference Call
`
`Unless at least one of the parties requests otherwise, we will not
`
`conduct an initial conference call as described in the Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). The
`
`parties are directed to contact the Board within one month of this Order if
`
`there is a need to discuss proposed changes to the schedule or any proposed
`
`motions. See 77 Fed. Reg. at 48,765–66 (guidance in preparing for the
`
`initial conference call).
`
`2. Conference Calls with the Board
`
`In any request for a conference call with the Board to resolve a
`
`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 for which agreement has not been reached; (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. Prior to contacting the Board,
`
`however, we encourage the parties to resolve any disputes arising in the
`
`proceeding on their own and in accordance with the precepts set forth in
`
`37 C.F.R. § 42.1(b).
`
`3. Confidential Information
`
`The parties must file confidential information using the appropriate
`
`availability indicator in the Board’s electronic filing system (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.
`
`
`
`2
`
`
`
`IPR2016-00364
`Patent 9,043,093 B2
`
`Any 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 Board has a strong interest in the public availability of the
`
`proceedings. 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.
`
`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 77 Fed. Reg.
`
`at 48,761.
`
`4. 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). We strongly encourage the parties to
`
`arrange for such a conference call with the Board no less than ten (10)
`
`business days prior to the due date for filing the Motion to Amend. The
`
`parties also are directed to the Board’s website for representative decisions
`
`relating to Motions to Amend among other topics. The parties may access
`
`these representative decisions at:
`
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`
`5. Depositions
`
`The parties are advised that the Testimony Guidelines appended to the
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (App. D), apply to
`
`this proceeding. The Board may impose an appropriate sanction for failure
`
`
`
`3
`
`
`
`IPR2016-00364
`Patent 9,043,093 B2
`
`to adhere to the Testimony Guidelines. See 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.
`
`6. Cross-Examination
`
`Except as the parties might otherwise agree, for each due date—
`
`a. Cross-examination begins after any supplemental evidence is
`
`due. See 37 C.F.R. § 42.53(d)(2).
`
`b. 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. See id.
`
`7. 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 77 Fed. Reg. at 48,768. 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.
`
`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
`
`
`
`4
`
`
`
`IPR2016-00364
`Patent 9,043,093 B2
`
`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-
`
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`
`evidence and cross-examination testimony.
`
`1. 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.
`
`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.
`
`
`
`5
`
`
`
`IPR2016-00364
`Patent 9,043,093 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 A.7, above) 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.
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2016-00364
`Patent 9,043,093 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................ August 29, 2016
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ...................................................................... October 31, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. November 29, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... December 20, 2016
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .......................................................................... January 3, 2017
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ....................................................................... January 10, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ....................................................................... January 23, 2017
`Oral argument (if requested)
`
`
`
`
`
`7
`
`
`
`IPR2016-00364
`Patent 9,043,093 B2
`
`PETITIONER:
`
`David L. Cavanaugh
`Daniel V. Williams
`Thomas E. Anderson
`WILMER CUTLER PICKERING HALE AND DORR LLP
`David.Cavanaugh@wilmerhale.com
`Daniel.Williams@wilmerhale.com
`Tom.Anderson@wilherhale.com
`
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`Ronald H. Spuhler
`MCANDREWS, HELD & MALLOY LTD.
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`rspuhler@mcandrews-ip.com
`
`8
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