`
`
`
`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`Paper 8
`Entered: February 8, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Cases IPR2016-01733
`Patent 9,189,437 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`As an initial matter, no initial conference call is scheduled for the
`above-identified proceedings. The parties are directed to contact the Board
`within a month of this Order if either party disagrees with holding a
`consolidated hearing for the above-identified proceedings or 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).
`
`A. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the above-identified proceedings. 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).
`If requested, a consolidated oral hearing for the aboved-identified
`proceedings will be held on DUE DATE 7. Any representation made by
`counsel at the consolidated hearing will be applicable to and useable in all
`the proceedings which have underlying basis for the representation.
`The parties are reminded that the Testimony Guidelines appended to
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
`
`2
`
`
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`
`(Aug. 14, 2012) (Appendix D), apply to these proceedings. 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
`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 motion for an observation on the
`cross-examination testimony of a reply witness (see section C, below) by
`DUE DATE 4.
`
`3
`
`
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 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 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.
`
`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.
`
`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-
`
`4
`
`
`
`Case IPR2016-01733
`Patent 9,189,437 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 48,767–68. 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 the trial
`Rules, Patent Owner must confer with the Board, preferreably no less than
`ten business days prior to DUE DATE 1, before filing any Motion to
`Amend.
`
`
`
`
`
`
`5
`
`
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .............................................. Upon Request
`
`DUE DATE 1 ............................................................................ May 10, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ August 10, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. September 11, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................ October 2, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ...................................................................... October 16, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ...................................................................... October 23, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................... November 9, 2017
`Oral argument (if requested)
`
`
`6
`
`
`
`Case IPR2016-01733
`Patent 9,189,437 B2
`
`
`
`For PETITIONER:
`Brian C. Rupp
`Carrie A. Beyer
`Nikola Colic
`DRINKER BIDDLE & REATH LLP
`Brian.Rupp@dbr.com
`Carrie.Beyer@dbr.com
`Nick.Colic@dbr.com
`
`
`
`For PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`Joseph Marinelli
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`jmarinelli@fitcheven.com
`
`
`7
`
`
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