Trials@uspto.gov
`571.272.7822
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`
`
`
`
`Paper No. 11
`Filed: October 7, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioner,
`
`v.
`
`SYNCHRONOSS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`
`Case IPR2016-00850
`Case IPR2016-00851
`Patent 6,671,757 B1
`
`
`
`Before TREVOR M. JEFFERSON, DAVID C. MCKONE and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 11
`Filed: October 7, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioner,
`
`v.
`
`SYNCHRONOSS TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`
`Case IPR2016-00850
`Case IPR2016-00851
`Patent 6,671,757 B1
`
`
`
`Before TREVOR M. JEFFERSON, DAVID C. MCKONE and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
`
`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
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`notice of the stipulation, specifically identifying the changed due dates, must
`
`be promptly filed. The parties may not stipulate to an extension of DUE
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`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
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`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
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`impose an appropriate sanction for failure to adhere to the Testimony
`
`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`1. DUE DATE 1
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`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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
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`2
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`
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
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`must arrange a conference call with the parties and the Board. The patent
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`owner is cautioned that any arguments for patentability not raised in the
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`response will be deemed waived.
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`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below) by
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`DUE DATE 4.
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`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
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`DUE DATE 4.
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`5. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`3
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`7. DUE DATE 7
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`Oral argument (if requested by either party) is set for DUE DATE 7.
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1.
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`Cross-examination begins after any supplemental evidence is
`
`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
`
`be used. Id.
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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
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`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
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`response must be equally concise and specific.
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`4
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
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`D. MOTION TO AMEND
`
`
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`Patent owner is reminded that it must confer with the Board before
`
`filing a motion to amend. 37 C.F.R. § 42.121(a). Patent owner should
`
`contact the Board to request a conference in sufficient time to ensure that the
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`conference is conducted at least two weeks before DUE DATE 1. Under
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`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).
`
`
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`E. PETITIONER’S REPLY
`
`
`
`Under 37 C.F.R. § 42.24(c), petitioner’s reply brief to patent owner’s
`
`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.
`
`
`
`F. CONFIDENTIAL INFORMATION
`
`The parties must file confidential information using the appropriate
`
`availability indicator in PTAB End to End (e.g., “Board and Parties Only”),
`
`regardless of whose confidential information it is. It is the responsibility of
`
`5
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
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`the party whose confidential information is at issue, not necessarily the
`
`proffering party, to file the motion to seal.
`
`A protective order is not entered in this proceeding unless the parties
`
`propose one and the Board approves it. If either party files a motion to seal
`
`before entry of a protective order, a jointly proposed protective order should
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`be presented as an exhibit to the motion. We encourage the parties to adopt
`
`the Board’s default protective order if they conclude that a protective order
`
`is necessary. See Default Protective Order, Office Patent Trial Practice
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`Guide, 77 Fed. Reg. at 48,769–71 (Appendix B). If the parties choose to
`
`propose a protective order deviating from the default protective order, a
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`marked-up comparison of the proposed and default protective orders should
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`be presented as an additional exhibit to the motion to seal, so that differences
`
`are highlighted. The parties should contact the Board if they cannot agree
`
`on the terms of the proposed protective order.
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`The Board has a strong interest in the public availability of the
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`proceedings. We advise the parties that redactions to documents filed in this
`
`proceeding should be limited strictly to isolated passages consisting entirely
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`of confidential information, and that the thrust of the underlying argument or
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`evidence must be clearly discernible to the public from the redacted
`
`versions. We also advise the parties that information subject to a protective
`
`order will become public if identified in a final written decision in this
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`proceeding, and that a motion to expunge the information will not
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`necessarily prevail over the public interest in maintaining a complete and
`
`understandable file history. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. at 48,761; 37 C.F.R. § 42.56.
`
`6
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
`
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`Notwithstanding the default filing times for an opposition and a reply
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`reflected in 37 C.F.R. § 42.25(a):
`
`(1) an opposition, if any, to a motion to seal is due seven days after
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`service of the motion; and
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`(2) a reply, if any, to an opposition to a motion to seal is due five days
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`after service of the opposition.
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`
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`G. DISCOVERY DISPUTES
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`The panel encourages the parties to resolve disputes relating to
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`discovery on their own and in accordance with the precepts set forth in
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`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
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`dispute before contacting the Board. If attempts to resolve the dispute fail,
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`either party may request a conference call with the Board and the other party
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`in order to seek authorization to move for relief.
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`In any request for a conference call with the Board to resolve a
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`discovery dispute, the requesting party shall: (a) certify that it has conferred
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`with the other party in an effort to resolve the dispute; (b) identify with
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`specificity the issues for which agreement has not been reached (substantive
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`discussion of the issues should be avoided); (c) identify the precise relief to
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`be sought; and (d) propose specific dates and times at which both parties are
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`available for the conference call.
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`7
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
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`H. DEPOSITIONS
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`Whenever a party submits a deposition transcript as an exhibit in this
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`proceeding, the submitting party shall file the full transcript of the deposition
`
`rather than excerpts of only those portions being cited. After a deposition
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`transcript has been submitted as an exhibit, all parties who subsequently cite
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`to portions of the transcript shall cite to the first-filed exhibit rather than
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`submitting another copy of the same transcript.
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`
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`8
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ........................................... Upon Request
`
`DUE DATE 1 ....................................................................... January 9, 2017
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ April 7, 2017
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`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 .............................................................................. May 8, 2017
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ............................................................................ May 24, 2017
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ............................................................................. June 7, 2017
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ........................................................................... June 14, 2017
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ........................................................................... June 28, 2017
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`Oral argument (if requested)
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`
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`9
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`10
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`IPR2016-00850
`IPR2016-00851
`Patent 6,671,757 B1
`
`
`
`PETITIONER:
`
`David Krinsky
`dkrinsky@wc.com
`
`Christopher Geyer
`cgeyer@wc.com
`
`
`
`PATENT OWNER:
`
`Scott Cummings
`scott.cummings@dentons.com
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