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Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 9
`Entered: December 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE,
`Patent Owner.
`
`Case IPR2016-01114 (Patent 7,777,753)
`Case IPR2016-01118 (Patent 7,321,368)
`Case IPR2016-01121 (Patent 5,960,464)
`Case IPR2016-01134 (Patent 7,542,045)
`Case IPR2016-01135 (Patent 5,812,789)1
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`1 This Scheduling Order sets due dates that are identical in all five cases.
`We, therefore, exercise our discretion to issue one Scheduling Order to be
`filed in each case. The parties are not authorized to use this style heading
`for any subsequent papers.
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`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).2
`
`A notice of the stipulation, specifically identifying the changed due dates,
`
`must be filed promptly. 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 the Office Patent Trial Practice Guide,
`
`77 Fed. Reg. at 48,765–66 for guidance in preparing for the initial
`
`
`2 The parties may not change DUE DATE 4 with respect to the requirement
`for requesting oral argument, without express authorization from the panel.
`
`2
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`conference call, and should be prepared to discuss (1) any proposed changes
`
`to this Scheduling Order; (2) any motions the parties anticipate filing during
`
`the trial; and (3) the parties’ availability to appear for a hearing or
`
`hearings in Alexandria, VA; Denver, CO; or San Jose, CA.3
`
`2. 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 and fully
`
`briefed in the response will be deemed waived. See In re Nuvasive, Inc.,
`
`Dkt No. 2015-1670, 2016 WL 7118526, at *3 (Fed. Cir. Dec. 7, 2016)
`
`(“NuVasive abandoned its challenge to the public accessibility
`
`determination even though the PTAB had warned NuVasive [in the
`
`Scheduling Order] that this would result in waiver.”).
`
`
`3 While we seek the parties’ input on the location of any hearing or hearings,
`we remind the parties that any hearing or hearings in these cases first must
`be requested by the parties by DUE DATE 4 and that the ultimate location
`of any hearing or hearings will depend heavily on the availability of hearing
`rooms at the various possible locations at the time of the request. Further,
`issues concerning the management of multiple proceedings (see 35 U.S.C.
`§ 315(d)) and Petitioner estoppel (see 35 U.S.C. § 315(e)(1)) may determine
`whether one or more of these cases may be maintained.
`
`3
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`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 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 any motion for
`
`observations 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 to any opposition to a motion to
`
`exclude evidence by DUE DATE 6.
`
`4
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`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.
`
`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
`
`Although the filing of a Motion to Amend is authorized under our
`
`rules, Patent Owner must confer with us before filing any Motion to Amend.
`
`5
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`37 C.F.R. § 42.121(a). Patent Owner should contact the Board to request
`
`such a conference, if necessary, at least ten business days before DUE
`
`DATE 1.
`
`
`
`
`
`6
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ....................... January 9, 2017 at 2:00p ET
`
`DUE DATE 1 ............................................................................ March 9, 2017
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................... June 9, 2017
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .............................................................................. July 10, 2017
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .............................................................................. July 31, 2017
`
`Motions for observations regarding cross-examination of reply
`
`witness
`
`Motions to exclude evidence
`
`Requests for oral argument4
`
`DUE DATE 5 ......................................................................... August 14, 2017
`
`Responses to motions for observations
`
`Oppositions to motions to exclude evidence
`
`
`4 Although the parties may stipulate to a different date for DUE DATE 4
`regarding the “Motion for observations regarding cross-examination of reply
`witness” and “Motions to exclude evidence,” the parties may not stipulate to
`a different date for the filing of “Requests for oral argument.”
`
`7
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`DUE DATE 6 ......................................................................... August 21, 2017
`
`Replies to oppositions to motions to exclude
`
`DUE DATE 7 ........................................................................................... TBD
`
`Oral argument (if requested)
`
`
`
`8
`
`

`
`IPR2016-01114 (Patent 7,777,753); IPR2016-01118 (Patent 7,321,368)
`IPR2016-01121 (Patent 5,960,464); IPR2016-01134 (Patent 7,542,045)
`IPR2016-01135 (Patent 5,812,789)
`
`For PETITIONER:
`
`David W. O’Brien
`Andrew S. Ehmke
`HAYNES AND BOONE LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`
`
`
`For PATENT OWNER:
`
`Masood Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`9

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