Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`
` Filed: February 16, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01520
`Patent 8,559,635 B1
` _____________
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 8
`
` Filed: February 16, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01520
`Patent 8,559,635 B1
` _____________
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01520
`Patent 8,559,635 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 filed promptly. The parties may not stipulate to an extension of DUE
`DATES 6 and 7. Nor does stipulating to a different DUE DATE 4 modify
`the deadline, set in this Order, for requesting an oral argument.
`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
`
`Either party may request an initial conference call within 30 days of
`this Scheduling Order. To request a conference call, the requesting
`party should submit a list of dates and times when the parties are
`available for a call. If an initial conference call is requested, the
`parties should be prepared to discuss any proposed changes to this
`
`
`
`2
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`
`Scheduling Order and any motions the parties anticipate filing during
`the trial. The parties are directed to the Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) for guidance
`in preparing for an initial conference call.
`
`2. ADR STATEMENT
`
`The parties are encouraged to discuss promptly alternative means for
`resolving their disputes regarding the subject matter of this
`proceeding. To advance the opportunities for early disposition,
`petitioner is encouraged to notify the Board, by the due date identified
`in the Appendix to this Order, that the parties have conferred
`regarding alternative dispute resolution and whether the parties have
`reached any agreements.
`
`3. 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.
`
`4. 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
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`
`5. 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.
`
`6. DUE DATE 4
`
`Each party must file any motion for an observation on the
`a.
`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.
`
`7. DUE DATE 5
`
`Each party must file any response to an observation on
`a.
`cross-examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to
`exclude evidence by DUE DATE 5.
`
`8. DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`9. DUE DATE 7
`
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`
`
`
`
`4
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`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
`Under 37 C.F.R. §§ 42.24 and 42.121, a motion to amend, if filed in
`this proceeding, and the petitioner’s opposition to the motion to amend are
`limited to twenty-five (25) pages; the patent owner’s reply to the opposition
`to the motion to amend is limited to twelve (12) pages; and the claim listing
`may be contained in an appendix to the motion, which does not count toward
`the page limit of the motion. See 37 C.F.R. §§ 42.24, 42.121(b);
`
`
`
`5
`
`
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`IPR2016-01520
`Patent 8,559,635 B1
`
`
`Amendments to the Rules of Practice for Trials Before the Patent Trial and
`Appeal Board, 80 Fed. Reg. 28,561, 28,565–66 (Final Rule) (May 19, 2015).
`The patent owner is reminded that it must confer with the Board before
`filing a motion to amend. 37 C.F.R. § 42.121(a). The patent owner should
`contact the Board to request the conference in sufficient time to ensure that
`the conference is conducted at least one week before DUE DATE 1.
`
`E. PETITIONER’S REPLY
`Under 37 C.F.R. § 42.24(c), the petitioner’s reply brief to the patent
`owner’s response is limited to twenty-five (25) pages. See 37 C.F.R.
`§ 42.24(c); Amendments to the Rules of Practice for Trials Before the Patent
`Trial and Appeal Board, 80 Fed. Reg. at 28,565.
`
`
`
`
`6
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`DUE DATE APPENDIX
`
`
`
`INITIAL CONFERENCE CALL ..................................... UPON REQUEST
`
`ADR STATEMENT DUE ......................................... 8 weeks after institution
`
`DUE DATE 1 ............................................................................ May 11, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... August 3, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ August 31, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................. September 21, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................ October 5, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ...................................................................... October 12, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ...................................................................... October 26, 2017
`Oral argument (if requested)
`
`
`
`7
`
`
`
`
`
`IPR2016-01520
`Patent 8,559,635 B1
`
`PETITIONER:
`
`Marcus E. Sernel
`Joel R. Merkin
`KIRKLAND &ELLIS LLP
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`
`
`
`PATENT OWNER:
`
`
`Douglas J. Kline
`Jennifer Albert
`Stephen Schreiner
`GOODWIN PROCTER LLP
`dkline@goodwinprocter.com
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`
`
`
`
`
`8
`
`
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