`Tel: 571.272.7822
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`Paper 11
`Entered: June 21, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE (USA) INC. and ZTE Corporation,
`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
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`Case IPR2017-00714
`Patent 6,470,399 B1
`____________
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`Before JONI Y. CHANG, JENNIFER S. BISK, and JAMES B. ARPIN,
`Administrative Patent Judges.
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`CHANG, Administrative Patent Judge.
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`SCHEDULING ORDER
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`IPR2017-00714
`Patent 6,470,399 B1
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`As an initial matter, no initial conference call is scheduled for the
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`instant proceeding. The parties are directed to contact the Board within a
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`month of this Order if there is a need to discuss proposed changes to this
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`Scheduling Order or proposed motions. See Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in
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`preparing for the initial conference call).
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`A. DUE DATES
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`This order sets due dates for the parties to take action after institution
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`of the instant proceeding. The parties may stipulate to different dates for
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`DUE DATES 1 through 5 (earlier or later, but no later than DUE DATE 6).
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`A notice of the stipulation, specifically identifying the changed due dates,
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`must be promptly filed. Although parties may stipulate to a different DUE
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`DATE 4 for filing observations and motions to exclude evidence, parties
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`may not stipulate to an extension for requesting an oral argument. The
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`parties also may not stipulate to an extension of DUE DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct
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`cross-examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending
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`on the evidence and cross-examination testimony (see section B, below).
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`If requested, an oral hearing for the instant proceeding will be held on
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`DUE DATE 7.
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (Appendix D),
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`apply to this proceeding. The Board may impose an appropriate sanction for
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`2
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`IPR2017-00714
`Patent 6,470,399 B1
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`failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
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`example, reasonable expenses and attorneys’ fees incurred by any party may
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`be levied on a person who impedes, delays, or frustrates the fair examination
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`of a witness.
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`1. DUE DATE 1
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`The patent owner may file—
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`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by DUE
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`DATE 1. If the patent owner elects not to file anything, the patent owner
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`must arrange a conference call with the parties and the Board. The patent
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`owner is cautioned that any arguments for patentability not raised in the
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`response will be deemed waived.
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`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3. DUE DATE 31
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
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`a.
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`Each party must file any observation on the cross-examination
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`testimony of a reply witness by DUE DATE 4 (see Section C, below).
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`1 Please be advised that, if no Motion to Amend is filed in this proceeding,
`Due Date 3 is moot, and the panel may advance Due Dates 4–7 sua sponte.
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`3
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`IPR2017-00714
`Patent 6,470,399 B1
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`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) by DUE DATE 4 (see Section D, below).
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`c.
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`Each party must file any request for oral argument (37 C.F.R.
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`§ 42.70(a)) by DUE DATE 4 (see above).
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`5. DUE DATE 5
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`a.
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`Each party must file any response to an observation on
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`cross-examination testimony by DUE DATE 5 (see Section C, below).
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`b.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`4
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`IPR2017-00714
`Patent 6,470,399 B1
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`C. OBSERVATION ON CROSS-EXAMINATION
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`An observation on cross-examination provides the parties with a
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`mechanism to draw the Board’s attention to relevant cross-examination
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`testimony of a reply witness because no further substantive paper is
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`permitted after the reply. See Office Patent Trial Practice Guide, 77 Fed.
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`Reg. at 48,767–68. The observation must be a concise statement of the
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`relevance of precisely identified testimony to a precisely identified argument
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`or portion of an exhibit. Each observation should not exceed a single, short
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`paragraph. The opposing party may respond to the observation. Any
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`response must be equally concise and specific.
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`D. MOTION TO EXCLUDE EVIDENCE
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`A motion to exclude evidence should not include arguments alleging
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`that a reply exceeds the scope of a proper reply. Parties are advised that the
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`Panel will not authorize motions to exclude replies (or portions thereof)
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`alleged to contain arguments that are outside the scope of a proper reply
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`under 37 C.F.R. § 42.23(b). The Panel will determine whether a party’s
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`reply is outside the scope of a proper reply when the Panel reviews all of the
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`parties’ briefs and prepares a final written decision.
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`E. MOTION TO AMEND
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`Although the filing of a Motion to Amend is authorized under the trial
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`Rules, Patent Owner must confer with the Board, preferreably no less than
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`ten business days prior to DUE DATE 1, before filing any Motion to
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`Amend.
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`5
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`IPR2017-00714
`Patent 6,470,399 B1
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL .............................................. Upon Request
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`DUE DATE 1 .................................................................. September 12, 2017
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 ..................................................................... December 1, 2017
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ................................................................... December 18, 2017
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ......................................................................... January 8, 2018
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`Observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument (no extension of time is permitted for filing
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`this request, see Section A above )
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`DUE DATE 5 ....................................................................... January 22, 2018
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ....................................................................... January 29, 2018
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ..................................................................... February 12, 2018
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`Oral argument (if requested)
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`6
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`IPR2017-00714
`Patent 6,470,399 B1
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`For PETITIONER:
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`Scott Miller
`Darren Franklin
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`smiller@sheppardmullin.com
`dfranklin@sheppardmullin.com
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`For PATENT OWNER:
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`Nicholas Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY, LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
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`7
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