Trials@uspto.gov
`571-272-7822
`
` Paper 8
`
`
` Entered: February 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`571-272-7822
`
` Paper 8
`
`
` Entered: February 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE, and MINN CHUNG,
`Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`A. INITIAL CONFERENCE CALL
`No initial conference call is scheduled for this case. The parties are
`directed to contact the Board within ten (10) business days of the date of this
`decision if there is a need to discuss proposed changes to this Scheduling
`Order (i.e., regarding DUE DATES 6 and 7) or any proposed motions, not
`authorized already by our Rules or by this Scheduling Order, which the
`parties anticipate filing during the trial. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (setting forth
`guidance in preparing for the initial conference call).
`The parties’ attention is directed to the following matters.
`
`1. Motion to Amend
`Patent Owner is reminded that it must confer with the Board before
`filing a Motion to Amend. 37 C.F.R. § 42.121(a). Patent Owner should
`contact the Board to request a conference in sufficient time to ensure that the
`conference is conducted at least one week before DUE DATE 1.
`Patent Owner and Petitioner are directed to the revised rules
`governing Motions to Amend. 37 C.F.R. §§ 42.24(a)(1), 42.24(c),
`42.121(b).
`
`2. 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. It is the responsibility of
`the party whose confidential information is at issue, not necessarily the
`proffering party, to file the motion to seal.
`
`2
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`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 urged to operate under the Board’s default protective order,
`should that become necessary. See Default Protective Order, Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012).
`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 differences are highlighted. The parties should contact the Board if they
`cannot agree on the terms of the proposed protective order.
`
`a. Redactions
`The Board has a strong interest in the public availability of the
`proceedings. Redactions should be limited strictly to isolated passages
`consisting of confidential information. The thrust of the underlying
`argument or evidence must be discernable from the redacted version.
`
`b. Confidential Information in Final Written Decisions
`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.
`
`
`3
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`3. Discovery Disputes
`The panel encourages the 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 shall meet and confer to resolve such a
`dispute before contacting the Board. If attempts to resolve the dispute fail,
`either party may request a conference call with the Board and the other party
`in order to seek authorization to move for relief.
`In any request for a conference call with the Board to resolve a
`discovery dispute, the requesting party shall: (a) certify that it has conferred
`with the other party in an effort to resolve the dispute; (b) identify with
`specificity the issues for which agreement has not been reached; (c) identify
`the precise relief to be sought; and (d) propose specific dates and times at
`which both parties are available for the conference call.
`
`B. 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.
`Regardless of whether the parties stipulate to a change of DUE DATE
`4, requests for oral argument must be filed no later than the date set forth in
`this order for DUE DATE 4, for Board planning purposes.
`
`4
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`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. at 48,772 (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. In addition to the revised rules concerning Motions to Amend
`mentioned above, the patent owner is directed to the revised rules governing
`Patent Owner Responses. 37 C.F.R. §§ 42.24(b), (d). 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.
`
`5
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`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. In addition to the
`revised rules concerning Motions to Amend mentioned above, the petitioner
`is directed to the revised rules governing Replies. 37 C.F.R. §§ 42.24(c),
`(d).
`
`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 observations 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 responses to observations 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.
`
`6
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`C. 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.
`
`D. 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. 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.
`
`7
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ May 24, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ August 24, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. September 25, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ...................................................................... October 16, 2017
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument1
`
`DUE DATE 5 ...................................................................... October 26, 2017
`Response to observations
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... November 2, 2017
`Reply to opposition to motion to exclude
`
`
`1 Although the parties may stipulate to a different date for DUE DATE 4
`regarding the “Observations regarding cross-examination of reply witness”
`and “Motions to exclude evidence,” the parties may not stipulate to a
`different date for the filing of “Requests for oral argument.”
`
`8
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`DUE DATE 7 .................................................................. November 16, 2017
`Oral argument (if requested)
`
`9
`
`
`
`
`
`
`
`IPR2016-01603
`Patent 8,581,710 B2
`
`
`
`PETITIONER:
`
`James M. Heintz
`Brian Erickson
`DLA Piper LLP
`Jim.heintz@dlapiper.com
`Apple-Immersion-IPSs@dlapiper.com
`brian.erickson@dlapiper.com
`
`
`
`10
`
`PATENT OWNER:
`Michael R. Fleming
`Babak Redjaian
`Irell & Manella LLP
`mfleming@irell.com
`bredjaian@irell.com
`
`
`
`
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