Trials@uspto.gov
`571.272.7822
`
`
`Paper 25
`Entered: November 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
` Case IPR2017-00321 (Patent 8,923,941 B2)1
`____________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`AMENDED SCHEDULING ORDER
`
`
`
`
`1 This order is to be filed in each case. The parties are not authorized to use
`this style heading in any subsequent papers.
`
`
`
`571.272.7822
`
`
`Paper 25
`Entered: November 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
` Case IPR2017-00321 (Patent 8,923,941 B2)1
`____________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`AMENDED SCHEDULING ORDER
`
`
`
`
`1 This order is to be filed in each case. The parties are not authorized to use
`this style heading in any subsequent papers.
`
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`INTRODUCTION
`On August 28, 2017, as requested by Patent Owner, we conducted a
`teleconference concerning the requirements associated with filing a Motion
`to Amend. Ex. 1068, Transcript of Motion to Amend Conference (“Conf.
`Tr.”) 52. At the beginning of the teleconference, we reminded the parties
`that a decision from the Court of Appeals for the Federal Circuit in Aqua
`Products v. Matal, at that time being considered en banc, was pending and
`that should such a decision supersede our guidance, the parties should read
`the Aqua Products decision and follow the appropriate guidance from the
`Federal Circuit concerning motions to amend. Conf. Tr., 5–6. As discussed
`below, on October 4, 2017, the Federal Circuit issued a decision in Aqua
`Products v. Matal, 872 F.3d 1290 (Fed. Cir 2017), and circumstances have
`changed.
`In our August 28, 2017 teleconference, we advised the parties that a
`Motion to Amend must present substitute claims amended to respond to a
`ground of unpatentability involved in the trial and is not an opportunity to
`amend the claims in some other way that does not relate to the issues
`pending before the panel (Conf. Tr., 7); that the amendment cannot seek to
`enlarge the scope of the claims or introduce any new subject matter, but can
`only narrow the scope of the clams (id. at 8); and that the duty of candor and
`good faith is applicable (id. at 8–9). Consistent with Guidance recently
`issued by the Chief Judge, we note now that the statutory and regulatory
`
`2 References to Paper Numbers in this Revised Scheduling Order are to
`papers in IPR2017-00315.
`
`2
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`requirements for a motion to amend under 35 U.S.C. § 316(d) and 37 C.F.R.
`§ 42.121, as well as the duty of candor under 37 C.F.R. § 42.11, remain
`applicable. See “Guidance on Motions to Amend in view of Aqua Products”
`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_
`to_amend_11_2017.pdf) (Nov. 21, 2017).
`During our August 28, 2017 teleconference, we also advised the
`parties that because a Motion to Amend is a motion, the burden of proof is
`on the movant, i.e., the Patent Owner, to show some kind of patentable
`distinction over the prior art of record and not on the Petitioner to show
`unpatentability. Id. at 6, 8. Patent Owner filed its Motion to Amend on
`September 25, 2017. Paper 23.
`The Federal Circuit’s Aqua Products decision now instructs us to
`“assess[] the patentability of the proposed substitute claims without placing
`the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at
`1328; see also “Guidance on Motions to Amend in view of Aqua Products”
`(“In light of the Aqua Products decision, the Board will not place the burden
`of persuasion on a patent owner with respect to the patentability of substitute
`claims presented in a motion to amend.”).
`In view of this directive from our reviewing court, we conducted a
`teleconference with the parties on October 13, 2017 to discuss modifying the
`present Revised Scheduling Order3 to accommodate briefing that addresses
`how the Federal Circuit’s decision applies to the present proceedings.
`
`3 On August 30, 2019, prior to the Aqua Products decision, the parties
`stipulated to a Revised Scheduling Order. Paper 19.
`
`3
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`During the conference, we advised the parties that our objective is to
`accommodate appropriate briefing of the relevant issues in due course by
`both parties without disrupting the on-going trial. On October 23, 2017, the
`parties contacted the Board by e-mail, having agreed upon dates proposed
`during the conference on October 13, 2017. To that end, we enter this
`amended Scheduling Order in IPR2017-00315 and co-pending cases
`IPR2017-00317, IPR2017-00318, IPR2017-00319, and IPR2017-00321.
`
`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 2 through 5 (earlier or later, but no later than DUE DATE 7). A
`notice of the stipulation, specifically identifying the changed due dates, must
`be filed promptly. 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
`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
`
`4
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`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.
`
`
`DUE DATE 2
`1.
`Petitioner must file any Reply to Patent Owner’s Response and
`Opposition to a Motion to Amend by DUE DATE 2.
`
`DUE DATE 3
`2.
`Patent Owner must file any Reply to Petitioner’s Opposition to Patent
`Owner’s Motion to Amend by DUE DATE 3.
`
`3. DUE DATE 4
`Petitioner must file any Sur-reply to Patent Owner’s Reply to
`Petitioner’s Opposition to a Motion to Amend
`
`4.
`
`DUE DATE 5
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply or sur-reply witness (see
`section C, below) by DUE DATE 5.
`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 5.
`
`5
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`
`5.
`
`DUE DATE 6
`a.
`Each party must file any response to an observation on
`cross-examination testimony by DUE DATE 6.
`b.
`Each party must file any opposition to a motion to
`exclude evidence by DUE DATE 6.
`
`DUE DATE 7
`6.
`Each party must file any reply to an opposition to a motion to exclude
`evidence by DUE DATE 7.
`
`DUE DATE 8
`7.
`The oral argument (if requested by either party) is set for DUE
`DATE 8.
`
`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 or sur-reply witness because no further
`
`6
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`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.
`
`PROTECTIVE ORDER
`D.
`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.
`
`7
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`
`DUE DATE APPENDIX
`
`
`
`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 .................................................................... December 22, 2107
`Patent Owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................ January 12, 2018
`Petitioner’s sur-reply to patent owner’s reply to petitioner’s opposition
`to motion to amend
`DUE DATE 5 ........................................................................ February 9, 2018
`Motion for observation regarding cross-examination of reply and sur-
`reply witnesses
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 6 ...................................................................... February 16, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 7 ...................................................................... February 23, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ...................................................................... February 27, 2018
`Oral argument (if requested)
`
`
`8
`
`
`
`Case IPR2017-00315 (Patent 8,929,965 B2)
`Case IPR2017-00317 (Patent 8,989,830 B2)
`Case IPR2017-00318 (Patent 8,886,269 B2)
`Case IPR2017-00319 (Patent 8,923,941 B2)
`Case IPR2017-00321 (Patent 8,923,941 B2)
`
`For PETITIONER:
`
`Michelle K. Holoubek
`Michael D. Specht
`Mark J. Consilvio
`STERNE, KESSLER, GOLDSTEIN & FOX
`holoubek-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`mconsilvio-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Justin B. Kimble
`Nicholas C Kliewer
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`
`
`
`9
`
`
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