`Entered: January 4, 2017
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2016-012461
`Patent 7,126,174 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
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`SCHEDULING ORDER
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`
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`1 Case IPR2016-01247 has been consolidated with this proceeding.
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`
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`IPR2016-01246
`Patent 7,126,174 B2
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`A. DUE DATES
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`This order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate to different dates for DUE
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`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
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`be promptly filed. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct
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`cross-examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending
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`on the evidence and cross-examination testimony (see section B, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
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`(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
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`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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`
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`1. INITIAL CONFERENCE CALL
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`The parties are directed to contact the Board within 21 days of this
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`Order if there is a need to discuss proposed changes to the Scheduling Order
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`or proposed motions. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for an initial
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`conference call). To request an initial conference call, the parties should
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`2
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`IPR2016-01246
`Patent 7,126,174 B2
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`submit to Trials@uspto.gov a list of dates and times when they are available
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`for a call.
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`2. DUE DATE 1
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`The patent owner may file a response to the petition (37 C.F.R.
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`§ 42.120). The patent owner must file any such response by DUE DATE 1.
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`If the patent owner elects not to file anything, the patent owner must arrange
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`a conference call with the parties and the Board. The patent owner is
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`cautioned that any arguments for patentability not raised in the response will
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`be deemed waived.
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`3. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response by
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`DUE DATE 2.
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`4. DUE DATE 3
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`None.2
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`5. DUE DATE 4
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`a. The patent owner 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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`2 Because the challenged patent has expired and may not be amended,
`no due date is being set for DUE DATE 3. The numbering of due dates
`remains the same, however, to maintain consistency with the exemplary
`numbering in Appendix A-1 of the Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,768–69.
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`3
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`IPR2016-01246
`Patent 7,126,174 B2
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`b. 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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`6. DUE DATE 5
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`a. The petitioner must file any response to an observation on
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`cross-examination testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`7. 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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`8. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`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. Cross-examination begins after any supplemental evidence is due.
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`37 C.F.R. § 42.53(d)(2).
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`2. Cross-examination ends no later than a week before the filing date
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`for any paper in which the cross-examination testimony is expected to be
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`used. Id.
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`4
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`IPR2016-01246
`Patent 7,126,174 B2
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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
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`cross-examination testimony of a reply witness because no further
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`substantive paper is permitted after the reply. See Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The
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`observation must be a concise statement of the relevance of precisely
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`identified testimony to a precisely identified argument or portion of an
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`exhibit. Each observation should not exceed a single, short paragraph. The
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`opposing party may respond to the observation. Any response must be
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`equally concise and specific.
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`5
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`IPR2016-01246
`Patent 7,126,174 B2
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL………………………..UPON REQUEST3
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`DUE DATE 1…………….………………………………......March 24, 2017
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`Patent owner’s response to the petition
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`DUE DATE 2………………………………………………......June 14, 2017
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`Petitioner’s reply to patent owner response to petition
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`DUE DATE 3
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`DUE DATE 4………………………………………………........July 5, 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……………………………………………..........July 19, 2017
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6…………………………………………………..July 26, 2017
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`Reply to opposition to motion to exclude
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`DUE DATE 7………………………………………………...August 8, 2017
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`Oral argument (if requested)
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`3 The word limits for papers in this proceeding are set forth in 37 C.F.R.
`§ 42.24 (e.g., 14,000 words for the patent owner’s response and 5,600 words
`for the petitioner’s reply). Given the consolidation of the two proceedings,
`however, if either party believes additional words are warranted, the parties
`shall confer with each other and request a conference call.
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`
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`6
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`IPR2016-01246
`Patent 7,126,174 B2
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`PETITIONER:
`
`Darren M. Jiron
`E. Robert Yoches
`J.P. Long
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`darren.jiron@finnegan.com
`bob.yoches@finnegan.com
`jp.long@finnegan.com
`
`
`
`PATENT OWNER:
`
`Neil F. Greenblum
`Michael J. Fink
`Arnold Turk
`GREENBLUM & BERNSTEIN, P.L.C.
`ngreenblum@gbpatent.com
`mfink@gbpatent.com
`aturk@gbpatent.com
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`7