`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: April 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)1
`_______________
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`1 This Order addresses the schedule applicable to the captioned cases. The
`parties may not use this caption without Board authorization.
`
`
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`A. 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. Nor does stipulating to a different DUE DATE 4 modify
`the deadline, set in this Order, for requesting an oral argument.
`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. INITIAL CONFERENCE CALL
`
`The parties are directed to contact the Board within a month of this
`
`decision if there is a need to discuss proposed changes to this Scheduling
`Order or proposed motions. See Office Patent Trial Practice Guide, 77 Fed.
`
`2
`
`
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the
`initial conference call).
`
`2. 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.
`
`3. 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.
`
`4. DUE DATE 32
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`
`5. 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.
`
`
`2 Please be advised that, if no Motion or Motions to Amend is or are filed in
`these proceedings, Due Date 3 is moot, and the panel may advance Due
`Dates 4–7 sua sponte.
`
`3
`
`
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`
`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. Parties are advised that the Panel will not authorize motions
`to exclude replies (or portions thereof) alleged to contain arguments that are
`outside the scope of a proper reply under 37 C.F.R. § 42.23(b). The Panel
`will determine whether a party’s reply is outside the scope of a proper reply
`when the Panel reviews all of the parties’ briefs and prepares a final written
`decision.
`6. 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.
`
`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`The panel is available to hear oral argument, if requested, at the
`USPTO Headquarters Office in Alexandria, Virginia, the Texas Regional
`Office, in Dallas, Texas, or the Rocky Mountain Regional Office, in Denver,
`Colorado. If the parties have a preference with regard to the above-
`identified locations, the parties are directed each to state the preference in
`
`4
`
`
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`the party’s request for oral argument, including whether the parties agree to
`a stated preference. The Board will set and identify the location in the order
`setting oral argument. Note that the Board may not always be able to honor
`the parties’ preference of hearing location due to the availability of hearing
`room resources and the panel’s needs.
`
`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-
`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.
`
`5
`
`
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`D. MOTION TO AMEND
`
`The parties are reminded that 37 C.F.R. § 42.24 was amended
`effective May 19, 2015, and that the page limits that pertain to motions to
`amend are as follows: any motion to amend is limited to 25 pages;
`Petitioner’s opposition to any motion to amend is limited to 25 pages; and
`Patent Owner’s reply to the opposition to any motion to amend is limited to
`12 pages. 37 C.F.R. §§ 42.24(a)–(c). The claim listing does not count
`towards the page limit for a motion to amend. 37 C.F.R. § 42.24(a)(1).
`
`E. PATENT OWNER RESPONSE AND PETITIONER’S REPLY
`
`Effective May 2, 2016, 37 C.F.R. § 42.24 was amended to provide
`that the patent owner response for an inter partes review is limited to 14,000
`words, and that Petitioner’s reply to the patent owner response is limited to
`5,600 words. See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1); Amendments to the
`Rules of Practice for Trials Before the Patent and Trial Appeal Board, Final
`Rule, 81 Fed. Reg. 18,750, 18,765 (April 1, 2016).
`
`F. FORMAT AND FILING OF DOCUMENTS
`
`The parties are reminded that 37 C.F.R. § 42.6 was amended effective
`May 19, 2015, and now requires the use of 14-point, Times New Roman
`proportional font, with normal spacing. The parties should familiarize
`themselves with the requirements of 37 C.F.R. § 42.6. Any filing that does
`not comply with 37 C.F.R. § 42.6 may be expunged.
`
`
`
`
`6
`
`
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .............................................. Upon Request
`
`DUE DATE 1 ................................................................................... 7/14/2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................................. 10/16/2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................................. 11/14/2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................................... 12/5/2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument (see Section A above)
`
`DUE DATE 5 ................................................................................. 12/19/2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................................. 12/27/2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ................................................................................... 1/16/2018
`Oral argument (if requested)
`
`
`7
`
`
`
`Case IPR2016-01860 (Patent 8,966,144 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`
`
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`
`
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`DiNOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`
`Michael R. Fleming
`IRELL & MANELLA LLP
`mfleming@irell.com
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`info@themeolafirm.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
