Trials@uspto.gov
`571-272-7822
`
`
`Paper 13
`Entered: April 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`FINNAVATIONS, LLC
`Patent Owner.
`____________
`
`Case IPR2016-01609
`Patent 8,132,720
`____________
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 13
`Entered: April 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`FINNAVATIONS, LLC
`Patent Owner.
`____________
`
`Case IPR2016-01609
`Patent 8,132,720
`____________
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01609
`Patent 8,132,720
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an 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). In lieu of
`such a call, we instruct the parties as follows:
`If a party wishes to request an initial conference call, that party
`a.
`shall request the call no later than 25 days after the institution of trial;
`A request for a conference call shall include: (1) a list of
`b.
`proposed motions, if any, to be discussed during the call; and (2) a list of
`dates and times when the parties are available for the call; and
`The parties shall be prepared to discuss during the initial
`c.
`conference call their concerns, if any, relating to the schedule in this
`proceeding as set forth below.
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. If either party files a motion to seal
`before entry of a protective order, a jointly proposed protective order should
`be presented as an exhibit to the motion. We encourage the parties to adopt
`the Board’s default protective order if they conclude that a protective order
`is necessary. See Default Protective Order, Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose
`to propose a protective order deviating from the default protective order,
`they must submit the proposed protective order jointly along with a marked-
`up comparison of the proposed and default protective orders showing the
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`IPR2016-01609
`Patent 8,132,720
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`differences; and the parties must explain why the proposed deviations from
`the default protective order are necessary.
`The Board has a strong interest in the public availability of the
`proceedings. We advise the parties that redactions to documents filed in this
`proceeding should be limited to isolated passages consisting entirely of
`confidential information, and that the thrust of the underlying argument or
`evidence must be clearly discernible from the redacted versions. We also
`advise the parties that information subject to a protective order will become
`public if identified in a final written decision in this proceeding, and that 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.
`3. Motions to Amend
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. See 37 C.F.R. § 42.121(a). Patent Owner should
`arrange for a conference call with the Board and opposing counsel at least one
`week before DUE DATE 1 in order to satisfy the conferral requirement. 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: https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/decisions.
`4. Discovery Disputes
`The Board 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
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`IPR2016-01609
`Patent 8,132,720
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`discovery, the parties shall 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.
`In any request for a conference call with the Board to resolve a
`discovery dispute, the requesting party shall: (1) certify that it has conferred
`with the other party in an effort to resolve the dispute; (2) identify with
`specificity the issues for which agreement has not been reached; (3) identify
`the precise relief to be sought; and (4) propose specific dates and times at
`which both parties are available for the conference call.
`5. Depositions
`The parties are advised 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.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript shall cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
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`IPR2016-01609
`Patent 8,132,720
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`6. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`a.
`Cross-examination begins after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`b.
`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. 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.
`
`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
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`IPR2016-01609
`Patent 8,132,720
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`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.
`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 petitioners 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 A.7, above) 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.
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`IPR2016-01609
`Patent 8,132,720
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`5. DUE DATE 5
`a.
`Each party must file any reply to a petitioner 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.
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`IPR2016-01609
`Patent 8,132,720
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`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. June 28, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... September 20, 2017
`Petitioners’ reply to patent owner’s response to petition
`Petitioners’ opposition to motion to amend
`
`DUE DATE 3 ....................................................................... October 18, 2017
`Patent owner’s reply to petitioners’ opposition to motion to amend
`
`DUE DATE 4 ..................................................................... November 8, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ................................................................... November 22, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................... November 29, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................... December 15, 2017
`Oral argument (if requested)
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`IPR2016-01609
`Patent 8,132,720
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`PETITIONER:
`
`W. Bailey
`John Hanish
`MAYNARD, COOPER & GALE, P.C.
`ebailey@maynardcooper.com
`jhanish@maynardcooper.com
`
`PATENT OWNER:
`
`Gary Sorden
`Kirby Drake
`KLEMCHUK LLP
`gary.sorden@klemchuk.com
`kirby.drake@klemchuk.com
`
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