Trials@uspto.gov
`571–272–7822
`
`
`
`Paper 12
`Entered: February 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01561
`Patent 6,233,181 B1
`____________
`
`
`
`Before BART A. GERSTENBLITH, BARBARA A. PARVIS, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`571–272–7822
`
`
`
`Paper 12
`Entered: February 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01561
`Patent 6,233,181 B1
`____________
`
`
`
`Before BART A. GERSTENBLITH, BARBARA A. PARVIS, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2016-01561
`Patent 6,233,181 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. 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
`The parties are directed to contact the Board within a month of this
`Scheduling Order if there is a need to discuss proposed changes to this
`Scheduling Order or proposed motions. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48,765–66 (guidance in preparing for the initial
`conference call).
`
`2
`
`
`
`IPR2016-01561
`Patent 6,233,181 B1
`
`
`a. Confidential Information
`The parties must file confidential information using the appropriate
`availability indicator in PTAB E2E (e.g., “Board and Parties Only”),
`regardless of whose confidential information it is. A party filing a document
`or thing to be sealed shall file a motion to seal concurrent with the filing of
`the document or thing to be sealed. See 37 C.F.R. § 42.14. However, the
`party who asserts that the document or thing is confidential bears the burden
`of proof to establish that it is entitled to the requested relief, i.e., sealing of
`the document or thing. See 37 C.F.R. § 42.20(c). Therefore, if the party
`who asserts confidentiality is not the party who filed the document or thing,
`the party who asserts confidentiality shall file its own motion to seal within
`seven days after the document or thing to be sealed was filed.
`If the entity whose confidential information is filed is not a party to
`this proceeding, i.e., the confidential information is that of a third party,
`then, the proffering party is responsible for (1) obtaining the fully-informed
`consent of the third party to use its information in this proceeding with the
`knowledge of the risks associated with the submission of the information to
`the Board, and (2) filing the motion to seal. The party that is responsible for
`filing the motion to seal has the burden of proof to establish that it is entitled
`to the requested relief, i.e., sealing of the documents. See 37
`C.F.R. § 42.20(c).
`A protective order does not exist in a case until one is filed in the case
`and is approved by the Board. If a motion to seal is filed by either party, the
`proposed protective order should be presented as an exhibit to the motion.
`The parties are encouraged to agree to and file the Board’s default protective
`order, should that become necessary. See Default Protective Order, Office
`
`3
`
`
`
`IPR2016-01561
`Patent 6,233,181 B1
`
`Patent Trial Practice Guide, 77 Fed. Reg. at 48,769–71, App. B. If the
`parties choose to propose a protective order deviating from the default
`protective order, they should submit the proposed protective order jointly. A
`marked-up comparison of the proposed and default protective orders should
`be presented as an additional exhibit to the motion to seal, so that difference
`can be understood readily. The parties should contact the Board if they
`cannot agree on the terms of the proposed protective order.
`
`Redactions
`b.
`Redactions should be limited strictly to isolated passages consisting
`entirely of confidential information. The thrust of the underlying argument
`or evidence must be clearly discernable from the redacted version.
`
`Confidential Information in Final Written Decisions
`c.
`Information subject to a protective order will become public if
`identified in a final written decision in this proceeding. A motion to
`expunge the information will not necessarily prevail over the public interest
`in maintaining a complete and understandable file history. See Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`2. 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
`
`4
`
`
`
`IPR2016-01561
`Patent 6,233,181 B1
`
`owner is cautioned that any arguments for patentability not raised in the
`response will be deemed waived.
`
`3. 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.
`
`4. 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.
`
`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.
`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 to an opposition to a motion to exclude
`evidence by DUE DATE 6.
`
`5
`
`
`
`IPR2016-01561
`Patent 6,233,181 B1
`
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7. If oral argument is requested by a party, an order will be issued
`with a specific time on the date indicated.
`
`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. at 48,767–68. 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
`
`Although the filing of a Motion to Amend is authorized under our
`Rules, a conference call with the panel must be held before filing any
`Motion to Amend. We strongly encourage the parties to request and arrange
`
`6
`
`
`
`IPR2016-01561
`Patent 6,233,181 B1
`
`a conference call with us no less than ten (10) business days prior to DUE
`DATE 1.
`
`
`
`
`
`7
`
`
`
`IPR2016-01561
`Patent 6,233,181 B1
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ...................................... UPON REQUEST
`
`DUE DATE 1 .............................................................................. May 9, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... August 8, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................... September 7, 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 .................................................................... November 9, 2017
`Oral argument (if requested)
`
`
`8
`
`
`
`IPR2016-01561
`Patent 6,233,181 B1
`
`PETITIONER:
`
`John R. Hutchins
`Rose Cordero Prey
`Michael N. Zachary
`ANDREWS KURTH KENYON LLP
`jhutchins@kenyon.com
`roseprey@andrewskurthkenyon.com
`michaelzachary@andrewskurthkenyon.com
`
`
`
`PATENT OWNER:
`
`Nicholas T. Peters
`Paul B. Henkelmann
`FITCH EVEN TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`9
`
`
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