Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: September 27, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: September 27, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 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.
`
`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. See 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
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`2. ADR STATEMENT
`
`
`
`The parties are encouraged to discuss promptly alternative means for
`
`resolving their disputes regarding the subject matter of this proceeding. To
`
`advance the opportunities for early disposition, petitioner is encouraged to
`
`notify the Board, by the due date identified in the Appendix to this Order,
`
`that the parties have conferred regarding alternative dispute resolution and
`
`whether the parties have reached any agreements.
`
`3. DUE DATE 1
`
`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
`
`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.
`
`4. 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.
`
`5. 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.
`
`3
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`6. 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.
`
`7. 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.
`
`8. DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`9. 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).
`
`4
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`Cross-examination ends no later than a week before the filing
`
`2.
`
`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. OTHER INSTRUCTIONS/GUIDANCE
`
`1. Conference calls. Prior to requesting a conference call, the parties
`
`shall attempt in good faith effort to resolve the issue. The email requesting a
`
`conference shall indicate such an effort was made.
`
`2. Motion to Exclude. The parties shall not to use the Motion to
`
`Exclude for any purpose other than to raise admissibility issues under the
`
`Federal Rules of Evidence. See 37 C.F.R. §§ 42.61–64. If an issue arises
`
`with regard to a paper being out of proper scope under 37 C.F.R. § 42.23(a),
`
`the parties shall contact the Board in a timely manner to raise the matter.
`
`See, e.g., IPR2014-00148, Paper 41.
`
`5
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`3. Supplemental Evidence/Supplemental Information. It is
`
`important to distinguish supplemental evidence (see 37 C.F.R. § 42.64(b)(2))
`
`from supplemental information (see 37 C.F.R. § 42.123). The rules do not
`
`contemplate more than one cycle of objection to evidence and subsequent
`
`supplemental evidence to cure the objection.
`
`4. Motion for Observation on Cross-Examination. A motion for
`
`Observation on Cross-Examination should not be argumentative, and the
`
`entry for each identified item is limited to one short paragraph. This does not
`
`mean that arguments can be presented so long as they are less than one short
`
`paragraph in length. Circumventing the length requirement by use of
`
`footnote is inappropriate.
`
` 5. Claim Construction. As stated in the Decision to Institute, claim
`
`construction in the Decision are preliminary. The parties further develop
`
`argument and evidence during the proceeding.
`
`
`
`
`
`
`
`6
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`DUE DATE APPENDIX
`
`ADR STATEMENT DUE .................................................... October 28, 2016
`
`DUE DATE 1 ................................................................... .December 14, 2016
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ...................................................................... February 28, 2017
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .......................................................................... March 31, 2017
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ April 21, 2017
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ............................................................................... May 5, 2017
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................. May 12, 2017
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................. May 23, 2017
`
`Oral argument (if requested)
`
`
`
`7
`
`
`
`IPR2016-00948 (Patent 8,641,525 B2)
`IPR2016-00949 (Patent 9,089,770 B2)
`
`
`
`
`PETITIONER:
`
`Joshua Harrison
`josh@bhiplaw.com
`
`
`
`Reynaldo Barcelo
`rey@bhiplaw.com
`
`
`
`PATENT OWNER:
`
`Ehab Samuel
`ESamuel@manatt.com
`
`
`
`8
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