Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01585
`Patent 8,904,516 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01585
`Patent 8,904,516 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`IPR2016-01585
`Patent 8,904,516 B2
`
`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) (App. D), apply to this proceeding. The Board may impose
`
`an appropriate sanction for failure to adhere to the Testimony Guidelines.
`
`See 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
`
`An initial conference call is not scheduled in this case. A party may
`
`request an initial conference call within 25 days after the institution of trial.
`
`A party requesting an initial conference call shall (a) identify the proposed
`
`motions, if any, to be discussed during the call; and (b) propose two or more
`
`dates and times when both parties are available for the call. When an initial
`
`conference call is scheduled in response to a request, the parties are directed
`
`2
`
`
`
`IPR2016-01585
`Patent 8,904,516 B2
`
`to the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,765–66 (Aug.
`
`14, 2012), for guidance in preparing for the initial conference call and
`
`should be prepared to discuss any proposed changes to the schedule in this
`
`proceeding.
`
`2. DUE DATE 1
`
`Patent Owner may file ––
`
`A. A Response to the Petition (37 C.F.R. § 42.120). Patent
`
`Owner is cautioned that any arguments for patentability
`
`not raised in the Response may be deemed waived.
`
`B. A Motion to Amend the patent (37 C.F.R. § 42.121).
`
`Patent Owner must file any such Response or Motion to Amend by
`
`DUE DATE 1. If Patent Owner elects not to file anything, Patent Owner
`
`must arrange a conference call with the parties and the Board.
`
`3. DUE DATE 2
`
`Petitioner must file any Reply to Patent Owner’s Response and
`
`Opposition to the Motion to Amend by DUE DATE 2.
`
`4. DUE DATE 3
`
`Patent Owner must file any reply to 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.
`
`3
`
`
`
`IPR2016-01585
`Patent 8,904,516 B2
`
`
`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 for a Motion to Exclude Evidence by
`
`DUE DATE 6.
`
`8. DUE DATE 7
`
`The Oral Argument (if requested by either party) is set for DUE
`
`DATE 7.
`
`B. CROSS-EXAMINATION
`
`Except as the parties might otherwise agree, for each due date—
`
`1.
`
`Cross-examination begins after any supplemental evidence is
`
`due. See 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. See 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-
`
`4
`
`
`
`IPR2016-01585
`Patent 8,904,516 B2
`
`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 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. PROTECTIVE ORDER
`
`A protective order will not be entered in this proceeding unless the
`
`parties file one and the Board approves it. The parties are encouraged to
`
`adopt the Board’s default protective order if a protective order is necessary.
`
`See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. at 48,769 (App. B). If the parties choose to propose a protective order
`
`deviating from the default protective order, they must submit the proposed
`
`protective order along with a marked-up comparison of the proposed and
`
`default protective orders showing the differences. If either party files a
`
`motion to seal before entry of a protective order, a proposed protective order
`
`should be presented as an exhibit to the motion that has been discussed with
`
`the opposing party and, preferably, be jointly proposed. If the protective
`
`order is not jointly proposed, the proponent of the order should identify
`
`where the parties differ in the proposed language of the order.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2016-01585
`Patent 8,904,516 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. May 12, 2017
`
`Patent Owner’s Response to the Petition
`
`Patent Owner’s Motion to Amend the patent
`
`DUE DATE 2 ............................................................................ August 1, 2017
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
`
`Petitioner’s Opposition to Motion to Amend
`
`DUE DATE 3 ..................................................................... September 1, 2017
`
`Patent Owner’s Reply to Petitioner’s Opposition to Motion to Amend
`
`DUE DATE 4 ................................................................... September 22, 2017
`
`Motion for Observation regarding cross-examination of reply witness
`
`Motion to Exclude Evidence
`
`Request for Oral Argument
`
`DUE DATE 5 ......................................................................... October 6, 2017
`
`Response to Observation
`
`Opposition to Motion to Exclude
`
`DUE DATE 6 ....................................................................... October 13, 2017
`
`Reply to Opposition to motion to exclude
`
`DUE DATE 7 ..................................................................... November 2, 2017
`
`6
`
`Oral Argument (if requested)
`
`
`
`
`
`IPR2016-01585
`Patent 8,904,516 B2
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Scott Border
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`tbroughan@sidley.com
`sborder@sidley.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`
`7
`
`
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