Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No.11
`Filed: February 27, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2016-01677
`Case IPR2016-01678
`Patent RE43,106 E1
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`571.272.7822
`
`
`
`
`
`Paper No.11
`Filed: February 27, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioner,
`
`v.
`
`TOSHIBA SAMSUNG STORAGE TECHNOLOGY KOREA
`CORPORATION,
`Patent Owner.
`
`
`
`
`
`
`
`Case IPR2016-01677
`Case IPR2016-01678
`Patent RE43,106 E1
`
`
`
`Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`A. GENERAL INSTRUCTIONS
`
`1. Initial Conference Call
`Unless at least one of the parties requests otherwise, we will not
`conduct an initial conference call as described in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). The
`parties are directed to contact the Board within 30 days of this Scheduling
`Order if there is a need to discuss proposed changes to the schedule or any
`proposed motions. See 77 Fed. Reg. at 48,765–66.
`
`2. Conference Calls with the Board
`In any request for a conference call with the Board to resolve a
`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. Prior to contacting the Board,
`however, we encourage the parties to resolve any disputes arising in the
`proceeding on their own and in accordance with the precepts set forth in
`37 C.F.R. § 42.1(b).
`
`3. 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, unless the party whose
`confidential information is at issue is not a party to this proceeding.
`2
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`
`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. at 48,769–71 (Appendix 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 the difference
`can be understood readily. The parties should contact the Board if they
`cannot agree on the terms of the proposed protective order.
`Redactions should be limited strictly to isolated passages consisting
`entirely of confidential information. The thrust of the underlying argument
`or evidence must be clearly discernible from the redacted version.
`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.
`
`4. Motion to Amend
`
`Although the filing of a Motion to Amend is authorized under our
`Rules, Patent Owner must confer with us before filing any Motion to
`Amend, preferably at least ten (10) business days prior to DUE DATE 1.
`
`3
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`5. Depositions
`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.
`
`6. 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.
`
`7. 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.
`
`4
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`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.
`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. 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
`
`5
`
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`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`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 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.
`
`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.
`
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`6
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`7. DUE DATE 7
`Oral argument (if requested by either party) is set for DUE DATE 7.
`
`
`
`
`
`
`7
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ........................................... Upon Request
`
`DUE DATE 1 ............................................................................ May 30, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... August 28, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................. September 27, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ..................................................................... October 18, 2017
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................... November 1, 2017
`Response to observations
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... November 8, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................. November 14, 2017
`Oral argument (if requested)
`
`
`8
`
`
`
`
`IPR2016-01677
`IPR2016-01678
`Patent RE43,106 E
`
`
`For PETITIONER:
`Brian A. Tollefson
`Soumya Panda
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`btollefson@rfem.com
`spanda@rfem.com
`
`For PATENT OWNER:
`Joseph A. Rhoa
`Jonathan Roberts
`Nixon & Vanderhye P.C.
`ar@nixonvan.com
`jr@nixonvan.com
`
`
`
`
`
`9
`
`
`
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