Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 18
`Date: June 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-002191
`Patent 7,116,710 B1
`_______________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 18
`Date: June 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-002191
`Patent 7,116,710 B1
`_______________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`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:
`a. If a party wishes to request an initial conference call, that party
`shall request the call no later than 25 days after the institution
`of trial;
`b. A request for a conference call shall include: (1) a list of
`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
`c. The parties shall be prepared to discuss during the initial
`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 a request for 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
`
`2
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`marked-up comparison of the proposed and default protective orders
`showing the differences.
`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 strictly 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 panel 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:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`4. Discovery Disputes
`The panel 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
`discovery, the parties shall meet and confer to resolve such a dispute before
`
`3
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`
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`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`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. 48,756, 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.
`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).
`
`4
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`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. 48,756, 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.
`Regardless of whether the parties stipulate to a change of DUE
`DATE 4, requests for oral argument must be filed no later than the date set
`forth in this order for DUE DATE 4, for Board planning purposes.
`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-
`
`5
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`
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`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`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. § 42.220), and
`b. A motion to amend the patent (37 C.F.R. § 42.221).
`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 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.
`5. DUE DATE 5
`a. Each party must file any reply to a petitioner observation on
`cross-examination testimony by DUE DATE 5.
`
`6
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`
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`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`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.
`
`7
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`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE .......................................................... Upon Request
`
`DUE DATE 1 ......................................................................... October 3, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... January 3, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ February 5, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ March 5, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .......................................................................... March 19, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................................... March 26, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ April 10, 2018
`Oral argument (if requested)
`
`
`
`
`8
`
`
`
`IPR2017-00210 and IPR2017-00219
`Patent 7,116,710 B1
`
`
`For PETITIONER:
`
`Richard Goldenberg
`Brian M. Seeve
`Dominic E. Massa
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`brian.seeve@wilmerhale.com
`dominic.massa@wilmerhale.com
`
`For PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`
`Todd M. Briggs
`Kevin P.B. Johnson
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`toddbriggs@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`
`
`
`
`
`
`9
`
`
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