Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 10
`Entered: August 29, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON EP, INC. and SCREEN LOGIX, LLC,
`Petitioner,
`
`v.
`
`DERRICK CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00642
`Patent 7,228,971 B2
`____________
`
`
`Before BARRY L. GROSSMAN, CARL M. DEFRANCO, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper No. 10
`Entered: August 29, 2016
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON EP, INC. and SCREEN LOGIX, LLC,
`Petitioner,
`
`v.
`
`DERRICK CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00642
`Patent 7,228,971 B2
`____________
`
`
`Before BARRY L. GROSSMAN, CARL M. DEFRANCO, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`IPR2016-00642
`Patent 7,228,971 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).
`
`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.
`
`The Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–
`66 (Aug. 14, 2012), provides guidance in preparing for the initial conference
`call.
`
`2
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`1. INITIAL CONFERENCE CALL
`No initial conference call has been scheduled in this proceeding. The
`parties are directed to contact the Board within a month of the mailing this
`order if there is a need to discuss proposed changes to this Scheduling Order,
`proposed motions, claim construction, or other initial questions the parties
`may have regarding conduct of this proceeding. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (providing
`guidance in preparing for the initial conference call).
`Our Decision on Institution in this proceeding includes at least one
`express claim construction in Section II.A. Should either party plan to
`contest the express construction(s), it must request an initial conference call
`at least five (5) days prior to date provided below for such a call to discuss
`claim construction briefing.
`
`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
`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.
`
`3
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`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.
`
`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—
`
`4
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`
`Cross-examination begins after any supplemental evidence is
`1.
`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 should
`arrange for a conference call with the panel and opposing counsel at least one
`week before DUE DATE 1 in order to satisfy the conferral requirement. We
`direct the parties to the Board’s website for decisions relating to Motions to
`Amend among other topics, including MasterImage 3D, Inc. v. RealD Inc.,
`IPR2015-00040, Paper 42, July 15, 2015 (precedential) and Idle Free Systems,
`
`5
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, June 11, 2013
`(informative).
`
`E. PROTECTIVE ORDER
`
`No protective order has been entered in this proceeding. The parties
`are reminded of the requirement for a protective order when filing a motion
`to seal. 37 C.F.R. § 42.54. If the parties have agreed to a proposed
`protective order, including the Default Standing Protective Order, 77 Fed.
`Reg. 48,756, App. B (Aug 14, 2012), they should file a signed copy of the
`proposed protective order with the motion to seal. If the parties choose to
`propose a protective order other than, or departing from, the Default
`Standing Protective Order, they must submit a joint, proposed protective
`order, accompanied by a red-lined version based on the Default Standing
`Protective Order.
`
`
`
`
`
`6
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .............. September 27, 2016, 3:00 pm ET
`Discuss initial questions the parties may have regarding conduct of
`this proceeding (if requested)
`Discuss claim construction (if requested)
`
`DUE DATE 1 .................................................................. November 22, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... February 14, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... March 14, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................. April 4, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ............................................................................ April 18, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................... April 25, 2017
`Reply to opposition to motion to exclude
`
`7
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`DUE DATE 7 .............................................................................. May 8, 2017
`Oral argument (if requested)
`
`
`8
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`For PETITIONER:
`
`Robinson Vu
`Paul Morico
`BAKER BOTTS LLP
`robinson.vu@bakerbotts.com
`paul.morico@bakerbotts.com
`
`For PATENT OWNER:
`
`Jason Gaskill
`Jason Mueller
`Melissa Rizzo
`Jay M. Mattappally
`ADAMS AND REESE, LLP
`jason.gaskill@arlaw.com
`jason.mueller@arlaw.com
`melissa.rizzo@arlaw.com
`jay.mattappally@arlaw.com
`
`Jeffrey S. Ginsberg
`David J. Copperberg
`PATTERSON BELKNAP WEBB & TYLER LLP
`dcooperberg@pbwt.com
`jginsberg@pbwt.com
`
`
`9
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
