Paper 8
`Entered: June 5, 2017
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VALENCELL, INC.
`Patent Owner.
`____________
`
`Case IPR2017-00317 (Patent 8,989,830 B2)
` Case IPR2017-00318 (Patent 8,989,296 B2)1
`____________
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are identical in each of these cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers without prior authorization.
`
`
`Entered: June 5, 2017
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VALENCELL, INC.
`Patent Owner.
`____________
`
`Case IPR2017-00317 (Patent 8,989,830 B2)
` Case IPR2017-00318 (Patent 8,989,296 B2)1
`____________
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are identical in each of these cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers without prior authorization.
`
`
`
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,989,296 B2)
`
`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 the
`
`Decisions on Institution if there is a need to discuss proposed changes to this
`
`Scheduling Order or proposed motions. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (setting forth
`
`guidance in preparing for the initial conference call). Patent Owner is
`
`2
`
`
`
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,989,296 B2)
`
`reminded that it must confer with the Board before filing a Motion to
`
`Amend. 37 C.F.R. § 42.121(a). Patent Owner should contact the Board to
`
`request such a conference, if necessary, at least two weeks before DUE
`
`DATE 1.
`
`2. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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.
`
`
`2 Please be advised that, if no Motion or Motions to Amend is filed in these
`proceedings, Due Date 3 is moot, and the panel may advance Due Dates 4–7
`sua sponte.
`
`3
`
`
`
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,989,296 B2)
`
`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.
`
`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.
`
`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.
`
`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).
`
`4
`
`
`
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,989,296 B2)
`
`
`2.
`
`Cross-examination ends no later than one 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. 48,756, 48,768 (Aug. 14, 2012). 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. PROTECTIVE ORDER
`
`No protective order has been entered in this proceeding. The parties
`
`are reminded of the requirement for a protective order when filing a motion
`
`to seal. 37 C.F.R. § 42.54. If the parties have agreed to a proposed protective
`
`order, including the Default Standing Protective Order, 77 Fed. Reg. 48,756,
`
`App. B (Aug 14, 2012), they should file a signed copy of the proposed
`
`protective order with the motion to seal. If the parties choose to propose a
`
`protective order other than, or departing from, the Default Standing
`
`Protective Order, they must submit a joint, proposed protective order,
`
`accompanied by a red-lined version based on the Default Standing
`
`Protective Order.
`
`5
`
`
`
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,989,296 B2)
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ..................................................................... September 6, 2017
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ...................................................................... December 5, 2017
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .......................................................................... January 4, 2018
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................ January 25, 2018
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ........................................................................ February 8, 2018
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ...................................................................... February 15, 2018
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ...................................................................... February 27, 2018
`
`Oral argument (if requested)
`
`
`
`6
`
`
`
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,989,296 B2)
`
`
`PETITIONER:
`
`Michael D. Specht
`Michelle K. Holoubek
`Jason A. Fitzsimmons
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`mspecht-PTAB@skgf.com
`holoubek-PTAB@skgf.com
`jfitzsimmons-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`7
`
`
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