Paper No. 12
`Entered: January 18, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 IPR2016-01376
`Case IPR2016-01377
`Case IPR2016-01378
`Case IPR2016-01379
`Patent 6,197,696 B11
`____________
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`1 This order addresses the schedule and other issues common to all cases;
`therefore, we issue a single order to be entered in each case.
`
`
`Entered: January 18, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`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 IPR2016-01376
`Case IPR2016-01377
`Case IPR2016-01378
`Case IPR2016-01379
`Patent 6,197,696 B11
`____________
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`1 This order addresses the schedule and other issues common to all cases;
`therefore, we issue a single order to be entered in each case.
`
`
`
`IPR2016-01376; IPR2016-01377; IPR2016-01378; IPR2016-01379
`Patent 6,197,696 B1
`
`I. DUE DATES
`This order sets due dates for the parties to take action after institution
`of these proceedings. 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 II, 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 these proceedings. 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.
`
`A. INITIAL CONFERENCE CALL
`The parties are directed to contact the Board within 21 days of this
`Order if there is a need to discuss proposed changes to the Scheduling Order
`or proposed motions. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
`48,765–66 (guidance in preparing for an initial conference call). To request
`an initial conference call, the parties should submit to Trials@uspto.gov a
`list of dates and times when they are available for a call.
`
`
`
`IPR2016-01376; IPR2016-01377; IPR2016-01378; IPR2016-01379
`Patent 6,197,696 B1
`
`
`B. 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 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.
`
`C. 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.
`
`D. 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.
`
`E. DUE DATE 4
`a. Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section III, below)
`by DUE DATE 4.
`b. Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) by DUE DATE 4.
`c. Each party must file any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 4.
`
`
`
`IPR2016-01376; IPR2016-01377; IPR2016-01378; IPR2016-01379
`Patent 6,197,696 B1
`
`
`F. 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.
`
`G. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`H. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`II. 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.
`
`III. 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. at 48,768. The observation must be a concise
`
`
`
`IPR2016-01376; IPR2016-01377; IPR2016-01378; IPR2016-01379
`Patent 6,197,696 B1
`
`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.
`
`IV. MOTION TO AMEND
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. See 37 C.F.R. § 42.121(a). Patent Owner
`should arrange for a conference call with the panel and opposing counsel at
`least one week before DUE DATE 1 in order to satisfy the conferral
`requirement. We direct the parties to the Board’s website for decisions
`relating to Motions to Amend among other topics, including MasterImage
`3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015)
`(Paper 42) (precedential) and Idle Free Systems, Inc. v. Bergstrom, Inc.,
`Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26) (informative).
`
`V. PROTECTIVE ORDER
`No protective order has been entered in these proceedings. If the
`parties have agreed to a proposed protective order, including the Default
`Standing Protective Order, 77 Fed. Reg. at 48,771 (Appendix B), 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
`departing from, the Default Standing Protective Order, they must submit a
`joint, proposed protective order, accompanied by a red-lined version based
`on the Default Standing Protective Order.
`
`
`
`
`
`IPR2016-01376; IPR2016-01377; IPR2016-01378; IPR2016-01379
`Patent 6,197,696 B1
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. April 5, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ June 21, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. July 19, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .......................................................................... August 8, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................ August 23, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................ August 30, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................. September 12, 2017
`
`Oral argument (if requested)
`
`
`
`
`
`IPR2016-01376; IPR2016-01377; IPR2016-01378; IPR2016-01379
`Patent 6,197,696 B1
`
`PETITIONER:
`Darren M. Jiron
`E. Robert Yoches
`J. Preston Long
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`darren.jiron@finnegan.com
`bob.yoches@finnegan.com
`j.preston.long@finnegan.com
`
`PATENT OWNER:
`J. Steven Baughman
`Andrew N. Thomases
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`andrew.thomases@ropesgray.com
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