`Tel: 571-272-7822
`
`Paper 7
`Entered: March 3, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`NETFLIX, INC. and ROKU INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01761
`Patent 8,850,507 B2
`_______________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
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`SCHEDULING ORDER
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`
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`IPR2016-01761
`Patent 8,850,507 B2
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`A. DUE DATES
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`This order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate to different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be promptly filed. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see section B, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
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`(Aug. 14, 2012) (Appendix D), apply to this proceeding. The Board may
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`impose an appropriate sanction for failure to adhere to the Testimony
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`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`1. INITIAL CONFERENCE CALL
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`The parties are directed to the Office Patent Trial Practice Guide,
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`77 Fed. Reg. at 48,765–66, for guidance in preparing for the initial
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`conference call, and should be prepared to discuss any proposed changes to
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`this Scheduling Order and any motions the parties anticipate filing during
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`the trial.
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`IPR2016-01761
`Patent 8,850,507 B2
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`2. DUE DATE 1
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`The patent owner may file—
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`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by DUE
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`DATE 1. If the patent owner elects not to file anything, the patent owner
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`must arrange a conference call with the parties and the Board. The patent
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`owner is cautioned that any arguments for patentability not raised in the
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`response will be deemed waived.
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`3. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`4. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`5. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below) by
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`DUE DATE 4.
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`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
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`DUE DATE 4.
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`IPR2016-01761
`Patent 8,850,507 B2
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`6. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`7. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`8. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Office Patent Trial Practice Guide,
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`77 Fed. Reg. at 48,768. The observation must be a concise statement of the
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`IPR2016-01761
`Patent 8,850,507 B2
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`relevance of precisely identified testimony to a precisely identified argument
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`or portion of an exhibit. Each observation should not exceed a single, short
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`paragraph. The opposing party may respond to the observation. Any
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`response must be equally concise and specific.
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`D. MOTION TO AMEND
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`
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`The parties are reminded that 37 C.F.R. § 42.24 was amended
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`effective May 19, 2015, and that the page limits that pertain to motions to
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`amend are as follows: any motion to amend is limited to 25 pages;
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`Petitioner’s opposition to any motion to amend is limited to 25 pages; and
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`Patent Owner’s reply to the opposition to any motion to amend is limited to
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`12 pages. 37 C.F.R. §§ 42.24(a)–(c). The claim listing does not count
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`towards the page limit for a motion to amend. 37 C.F.R. § 42.24(a)(1).
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`E. PATENT OWNER RESPONSE AND PETITIONER’S REPLY
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`
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`Effective May 2, 2016, 37 C.F.R. § 42.24 was amended to provide
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`that the patent owner response for a post-grant review is limited to 18,700
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`words, and that Petitioner’s reply to the patent owner response is limited to
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`5,600 words. See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1); Amendments to the
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`Rules of Practice for Trials Before the Patent and Trial Appeal Board, Final
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`Rule, 81 Fed. Reg. 18,750, 18,765 (April 1, 2016).
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`F. FORMAT AND FILING OF DOCUMENTS
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`
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`The parties are reminded that 37 C.F.R. § 42.6 was amended effective
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`May 19, 2015, and now requires the use of 14-point, Times New Roman
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`proportional font, with normal spacing. The parties should familiarize
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`themselves with the requirements of 37 C.F.R. § 42.6. Any filing that does
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`not comply with 37 C.F.R. § 42.6 may be expunged.
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`IPR2016-01761
`Patent 8,850,507 B2
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ........ 03/27/2017 at 2:00 PM Eastern Time
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`DUE DATE 1 ................................................................................. 06/06/2017
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 .................................................................................. 09/06/2017
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ................................................................................. 10/06/2017
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ................................................................................. 10/27/2017
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ................................................................................. 11/13/2017
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ................................................................................ 11/20/2017
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ................................................................................ 12/04/2017
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`Oral argument (if requested)
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`6
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`7
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`IPR2016-01761
`Patent 8,850,507 B2
`
`For PETITIONER:
`
`Chun Ng
`Patrick McKeever
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`cng@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`
`
`
`For PATENT OWNER:
`
`Matthew Juren
`Barry Bumgardner
`matthew@nelbum.com
`barry@nelbum.com
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`
`