Trials@uspto.gov
`571-272-7822
`
`Paper No. 11
`Entered: January 17, 2018
`
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01683
`Patent 8,571,194 B2
`____________
`
`
`Before KARL EASTHOM, JEFFREY S. SMITH, and MINN CHUNG,
`Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`571-272-7822
`
`Paper No. 11
`Entered: January 17, 2018
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01683
`Patent 8,571,194 B2
`____________
`
`
`Before KARL EASTHOM, JEFFREY S. SMITH, and MINN CHUNG,
`Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`IPR2017-01683
`Patent 8,571,194 B2
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
` An initial conference call is optional; the parties are directed to contact the
`Board within a month of this decision to schedule an initial conference call only if
`there is a need to discuss proposed changes to this Scheduling Order or proposed
`motions. The parties are directed to the Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,765–66 (Aug. 14, 2012) for guidance in preparing for the initial
`conference call, and should be prepared to discuss any proposed changes to this
`Scheduling Order and any motions the parties anticipate filing during the trial.
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties file
`one and the Board approves it. 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 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
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`IPR2017-01683
`Patent 8,571,194 B2
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`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.
`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 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: (a) certify that it has conferred with the other
`party in an effort to resolve the dispute; (b) identify with specificity the issues for
`which agreement has not been reached; (c) identify the precise relief to be sought;
`and (d) 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 (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
`
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`IPR2017-01683
`Patent 8,571,194 B2
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`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—
`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.
`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 (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.
`
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`IPR2017-01683
`Patent 8,571,194 B2
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`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 DATE 6 nor stipulate to an
`alteration of DUE DATE 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.
`1. 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 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.
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`IPR2017-01683
`Patent 8,571,194 B2
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`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.8, above) by DUE
`DATE 4.
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 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.
`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.
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`IPR2017-01683
`Patent 8,571,194 B2
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`DUE DATE APPENDIX
`
`
`
`INITIAL CONFERENCE CALL ............................................ Upon Request
`
`DUE DATE 1 ............................................................................ April 19, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..............................................................................July 19, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... August 21, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... September 11, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ................................................................... September 25, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ....................................................................... October 10, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ....................................................................... October 16, 2018
`Oral argument (if requested)
`
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`IPR2017-01683
`Patent 8,571,194 B2
`
`PETITIONER:
`
`Erika H. Arner
`Jason E. Stach
`Daniel C. Cooley
`Cara Lasswell
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT, & DUNNER, LLP
`erika.arner@finnegan.com
`jason.stach@finnegan.com
`daniel.cooley@ finnegan.com
`cara.lasswell@finnegan.com
`
`
`PATENT OWNER:
`Brett Mangrum
`Sean D.Burdick
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett.mangrum@etheridgelaw.com
`sean.burdick@unilocusa.com
`ryan@etheridgelaw.com
`
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