Paper 9
`Trials@uspto.gov
`Entered: October 11, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ITRON, INC.,
`Petitioner,
`
`v.
`
`SMART METER TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01199
`Patent 7,058,524 B2
`____________
`
`
`Before BRYAN F. MOORE, BARBARA A. BENOIT, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
` SCHEDULING ORDER
` 37 C.F.R. § 42.5
`
`
`
`Trials@uspto.gov
`Entered: October 11, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ITRON, INC.,
`Petitioner,
`
`v.
`
`SMART METER TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01199
`Patent 7,058,524 B2
`____________
`
`
`Before BRYAN F. MOORE, BARBARA A. BENOIT, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
` SCHEDULING ORDER
` 37 C.F.R. § 42.5
`
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`A. DUE DATES
`This Order sets due dates for the parties to take action after institution
`of the proceedings. 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-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 these proceedings. 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 one month of the
`entry date for this Scheduling Order if there is a need to discuss proposed
`
`
`
`2
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`changes to this Order or proposed motions. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in
`preparing for the initial conference call).
`
`2. 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 on or
`before 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 on or before DUE DATE 2.
`
`4. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend on or before DUE DATE 3.
`
`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) on or
`before DUE DATE 4.
`
`
`
`3
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`
`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)) on or
`before DUE DATE 4.
`
`6. DUE DATE 5
`a. Each party must file any response to an observation on
`cross-examination testimony on or before DUE DATE 5.
`b. Each party must file any opposition to a motion to exclude evidence
`on or before DUE DATE 5.
`
`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence on or
`before 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).
`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.
`
`
`
`
`4
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`C. OBSERVATION ON CROSS-EXAMINATION
`An 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. MEET AND CONFER REQUIREMENT
`The parties are encouraged to engage in meaningful discussion before
`seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for relief
`with the Board. At a minimum, before requesting authorization, the parties
`shall confer with each other in a good-faith effort to resolve the issue for
`which relief is to be sought. Only if the parties cannot resolve the issue on
`their own may a party request a conference call with the Board in order to
`seek authorization to move for relief.1 In any request for a conference call
`with the Board, the requesting party shall: (1) certify that it has in good-
`faith conferred (or attempted to confer) with the other parties in an effort to
`resolve the issue; (2) identify with specificity the issue for which agreement
`has not been reached; (3) state the precise relief to be sought; and
`
`
`1 Patent Owner may file a motion to amend without prior authorization, but
`only after conferring with the Board. 37 C.F.R. § 42.121(a).
`5
`
`
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`(4) propose specific dates and times at which both parties are available for
`the conference call.
`
`DUE DATE APPENDIX
`INITIAL CONFERENCE CALL ....................................... UPON REQUEST
`DUE DATE 1 ..................................................................... December 21, 2017
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent ............................................
`DUE DATE 2 ........................................................................... March 13, 2018
`
`Petitioner’s reply to patent owner response to petition ...........................
`
`Petitioner’s opposition to motion to amend ............................................
`DUE DATE 3 ............................................................................. April 12, 2018
`
`Patent owner’s reply to petitioner opposition to motion to amend
`DUE DATE 4 ................................................................................ May 3, 2018
`Observation regarding cross-examination of reply witness
`Motion to exclude evidence
`
`Request for oral argument .......................................................................
`
`DUE DATE 5 .............................................................................. May 17, 2018
`
`Response to observation
`
`Opposition to motion to exclude
`DUE DATE 6 .............................................................................. May 24, 2018
`
`Reply to opposition to motion to exclude ...............................................
`DUE DATE 7 ................................................................................ June 7, 2018
`Oral argument (if requested)
`
`
`
`
`
`6
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`PETITIONER:
`Kirk T. Bradley
`kirk.bradley@alston.com
`Christopher Douglas
`Alston & Bird LLP
`christopher.douglas@alston.com
`
`PATENT OWNER:
`Decker A. Cammack
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`dcammack@whitakerchalk.com
`
`
`
`
`
`7
`
`
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