Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: December 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01159
`Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: December 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01159
`Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`IPR2016-01159
`Patent 8,694,657 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
`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. 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.
`
`1. INITIAL CONFERENCE CALL
`An initial conference call is not scheduled in this case. A party may
`request an initial conference call within 25 days after the institution of trial.
`A party requesting an initial conference call shall: (a) identify the proposed
`motions, if any, to be discussed during the call; and (b) propose two or more
`dates and times when both parties are available for the call. When an initial
`conference call is scheduled in response to a request, the parties are directed
`
`2
`
`
`
`IPR2016-01159
`Patent 8,694,657 B1
`to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66
`(Aug. 14, 2012), for guidance in preparing for the initial conference call and
`should be prepared to discuss any proposed changes to the schedule in this
`proceeding.
`
`2. DUE DATE 1
`The patent owner may file a response to the petition (37 C.F.R.
`§ 42.120). The patent owner must file any such response 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.
`Note that, because the ’657 patent is expired, no motion to amend the
`patent may be filed under 37 C.F.R. § 42.121.
`
`3. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response by
`DUE DATE 2.
`
`4. DUE DATE 3
`Because the ’657 patent is expired, and no motion to amend the patent
`may be filed under 37 C.F.R. § 42.121, DUE DATE 3 is not applicable to
`this proceeding.
`
`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.
`
`3
`
`
`
`IPR2016-01159
`Patent 8,694,657 B1
`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—
`1.
`Cross-examination begins after any supplemental evidence is
`due. See 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. See 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-
`
`4
`
`
`
`IPR2016-01159
`Patent 8,694,657 B1
`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. 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.
`
`D. MOTION TO AMEND
`As stated above, because the ’657 patent is expired, no motion to
`amend the patent may be filed under 37 C.F.R. § 42.121 .
`
`G. PROTECTIVE ORDER
`A protective order will not be entered in this proceeding unless the
`parties file one and the Board approves it. The parties are encouraged to
`adopt the Board’s default protective order if a protective order is necessary.
`See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48,769 (App. B). If the parties choose to propose a protective order
`deviating from the default protective order, they must submit the proposed
`protective order along with a marked-up comparison of the proposed and
`default protective orders showing the differences. If either party files a
`motion to seal before entry of a protective order, a proposed protective order
`should be presented as an exhibit to the motion that has been discussed with
`the opposing party and, preferably, be jointly proposed. If the protective
`order is not jointly proposed, the proponent of the order should identify
`where the parties differ in the proposed language of the order.
`
`
`
`
`5
`
`
`
`
`
`IPR2016-01159
`Patent 8,694,657 B1
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .......................................................................... March 13, 2017
`Patent owner’s response to the petition
`
`DUE DATE 2 .............................................................................. June 12, 2017
`Petitioner’s reply to patent owner’s response to petition
`
`DUE DATE 3 ............................................................................ Not applicable
`
`DUE DATE 4 ........................................................................... August 2, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ......................................................................... August 16, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ......................................................................... August 23, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................... September 6, 2017
`Oral argument (if requested)
`
`
`6
`
`
`
`IPR2016-01159
`Patent 8,694,657 B1
`PETITIONER:
`
`Heidi Keefe
`Phillip Morton
`Andrew Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`
`PATENT OWNER:
`
`Vincent Rubino
`Peter Lambrianakos
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`plambrianakos@brownrudnick.com
`
`
`7
`
`
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