Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: January 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
` Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01349
`Patent 8,218,481 B2
`____________
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and TERRENCE W.
`McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`Paper 12
`Entered: January 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
` Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01349
`Patent 8,218,481 B2
`____________
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and TERRENCE W.
`McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`
`A. DUE DATES
`The Appendix to 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), except that the parties may not modify the deadline for requesting
`oral argument. 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 C, 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. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`b.
`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
`
`2
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`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.
`
`2. 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.
`
`3. 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.
`
`4. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section D, 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.
`
`5. 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.
`
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`3
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO Regional Office in San Jose,
`California.
`
`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. OBSERVATIONS ON CROSS-EXAMINATION
`Observations 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 observations must be concise
`statements 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
`observations. Any response must be equally concise and specific.
`
`4
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`D. PROTECTIVE ORDER
`
`A protective order does not exist in a proceeding until one is approved
`and entered by the Board. The parties are reminded of the requirement for a
`protective order when filing a motion to seal. 37 C.F.R. §42.54. If the
`parties have agreed to a proposed protective order, including the Standing
`Default Protective Order, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012, they
`should file a signed copy of the proposed protective order with the motion to
`seal. If the parties choose to propose a protective order other than, or
`deviating from, the default Standing Protective Order, they must submit a
`joint, proposed protective order. A marked-up comparison or red-lined
`version of the default protective order in Appendix B to the Board’s Office
`Patent Trial Practice Guide should be presented with the motion to seal so
`that differences can be understood readily.
`
`E. CONFERENCE CALLS
` The panel encourages parties to resolve disputes relating to discovery
`on their own and in accordance with the precepts set forth in 37 C.F.R.
`§ 42.1(b). To the extent that a dispute arises between the parties relating to
`discovery, the parties should meet and confer to resolve such a dispute
`before contacting the Board. If attempts to resolve the dispute fail, a party
`may request a conference call with the Board and the other party in order to
`seek authorization to move for relief.
`
`
`
`5
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. April 3, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ June 16, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................ June 23, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ June 26, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ............................................................................... July 7, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................. July 14, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................. July 27, 2017
`Oral argument (if requested)
`
`
`6
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`PETITIONER:
`
`Charles M. McMahon
`Hersh H. Mehta
`McDermott WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`evolved_rk_team@robinskaplan.com
`
`
`
`
`
`7
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
