Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 8
`Entered: March 13, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`WHATSAPP INC.,
`Petitioner,
`v.
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01659 (Patent 9,049,574 B2)
`Case IPR2016-01660 (Patent 9,049,574 B2)
`Case IPR2016-01661 (Patent 9,055,416 B2)
`Case IPR2016-01662 (Patent 9,055,416 B2)1
`_______________
`
`Before THU A. DANG, MICHAEL R. ZECHER, and
`PETER P. CHEN, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`1 This Scheduling Order sets due dates that are identical in all four cases.
`We exercise our discretion to issue one Scheduling Order to be filed in each
`case. The parties are not authorized to use this style heading for any
`subsequent papers, without prior authorization from the panel.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 8
`Entered: March 13, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`WHATSAPP INC.,
`Petitioner,
`v.
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01659 (Patent 9,049,574 B2)
`Case IPR2016-01660 (Patent 9,049,574 B2)
`Case IPR2016-01661 (Patent 9,055,416 B2)
`Case IPR2016-01662 (Patent 9,055,416 B2)1
`_______________
`
`Before THU A. DANG, MICHAEL R. ZECHER, and
`PETER P. CHEN, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`1 This Scheduling Order sets due dates that are identical in all four cases.
`We exercise our discretion to issue one Scheduling Order to be filed in each
`case. The parties are not authorized to use this style heading for any
`subsequent papers, without prior authorization from the panel.
`
`
`
`IPR2016-01659 (Patent 9,049,574 B2)
`IPR2016-01660 (Patent 9,049,574 B2)
`IPR2016-01661 (Patent 9,055,416 B2)
`IPR2016-01662 (Patent 9,055,416 B2)
`
`A. DUE DATES
`The Appendix to 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), except that the parties may not modify the deadline for requesting
`oral argument. 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 C, 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. 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).
`
`2
`
`
`
`IPR2016-01659 (Patent 9,049,574 B2)
`IPR2016-01660 (Patent 9,049,574 B2)
`IPR2016-01661 (Patent 9,055,416 B2)
`IPR2016-01662 (Patent 9,055,416 B2)
`
`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.
`
`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.
`
`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 any 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 any responses 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.
`
`3
`
`
`
`IPR2016-01659 (Patent 9,049,574 B2)
`IPR2016-01660 (Patent 9,049,574 B2)
`IPR2016-01661 (Patent 9,055,416 B2)
`IPR2016-01662 (Patent 9,055,416 B2)
`
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7. Oral argument, if requested, will be held at USPTO headquarters
`in Alexandria, Virginia.
`
`B. INITIAL CONFERENCE CALL
`
`An initial conference call will be optional in this inter partes review.
`The parties should promptly notify the Board if they wish to participate in an
`initial conference call. 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, and should be prepared
`to discuss any proposed changes to this Scheduling Order and any motions
`the parties anticipate filing during the trial.
`
`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.
`
`4
`
`
`
`IPR2016-01659 (Patent 9,049,574 B2)
`IPR2016-01660 (Patent 9,049,574 B2)
`IPR2016-01661 (Patent 9,055,416 B2)
`IPR2016-01662 (Patent 9,055,416 B2)
`
`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. 48,756, 48,768 (Aug. 14, 2012). The observations must be concise
`statements 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
`observations. Any response must be equally concise and specific.
`
`E. PROTECTIVE ORDER
`
`A protective order does not exist in a proceeding until one is approved
`and entered by the Board. The parties are reminded of the requirement for a
`protective order when filing a motion to seal. 37 C.F.R. §42.54. If the
`parties have agreed to a proposed protective order, including the Standing
`Default Protective Order, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012), 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
`deviating from, the default Standing Protective Order, they must submit a
`joint, proposed protective order. A marked-up comparison or red-lined
`version of the default protective order in Appendix B to the Board’s Office
`Patent Trial Practice Guide should be presented with the motion to seal so
`that differences can be understood readily.
`
`5
`
`
`
`IPR2016-01659 (Patent 9,049,574 B2)
`IPR2016-01660 (Patent 9,049,574 B2)
`IPR2016-01661 (Patent 9,055,416 B2)
`IPR2016-01662 (Patent 9,055,416 B2)
`
`F. CONFERENCE CALLS
` The panel encourages 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 should meet and confer to resolve such a dispute
`before contacting the Board. If attempts to resolve the dispute fail, a party
`may request a conference call with the Board and the other party in order to
`seek authorization to move for relief.
`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 such a conference at least two weeks before
`DUE DATE 1. We direct the parties to the Board’s website for
`representative decisions relating to Motions to Amend among other topics.
`The parties may access these representative decisions at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.js
`p.
`
`
`
`
`
`6
`
`
`
`IPR2016-01659 (Patent 9,049,574 B2)
`IPR2016-01660 (Patent 9,049,574 B2)
`IPR2016-01661 (Patent 9,055,416 B2)
`IPR2016-01662 (Patent 9,055,416 B2)
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL …………………………………. Optional
`
`DUE DATE 1 ............................................................................. June 13, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... September 13, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ....................................................................... October 13, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ..................................................................... November 3, 2017
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ................................................................... November 17, 2017
`Responses to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................... November 29, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ...................................................................... December 8, 2017
`Oral argument (if requested)
`
`
`7
`
`
`
`IPR2016-01659 (Patent 9,049,574 B2)
`IPR2016-01660 (Patent 9,049,574 B2)
`IPR2016-01661 (Patent 9,055,416 B2)
`IPR2016-01662 (Patent 9,055,416 B2)
`
`PETITIONER:
`Heidi L. Keefe
`Andrew C. Mace
`Jennifer H. Volk
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`jvolkfortier@cooley.com
`
`PATENT OWNER:
`Barry Schindler
`Lennie Bersh
`GREENBERG TRAURIG, LLP
`schindlerb@gtlaw.com
`bershl@gtlaw.com
`
`Jeremy J. Monaldo
`FISH & RICHARDSON P.C.
`jjm@fr.com
`
`
`8
`
`
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