Trials@uspto.gov
`Tel: 571-272-7822
`
`
` Paper No. 8
`Entered: April 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2) 1
`
`_______________
`
`
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A WORTH, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Scheduling Order establishes a common schedule for these three
`related cases. A copy of this Order will be filed in each case. The parties,
`however, are not authorized to use this heading style in subsequent papers.
`
`
`Tel: 571-272-7822
`
`
` Paper No. 8
`Entered: April 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DYNACRAFT BSC, INC.,
`Petitioner,
`
`v.
`
`MATTEL, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2) 1
`
`_______________
`
`
`
`Before BARRY L. GROSSMAN, MITCHELL G. WEATHERLY, and
`JAMES A WORTH, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Scheduling Order establishes a common schedule for these three
`related cases. A copy of this Order will be filed in each case. The parties,
`however, are not authorized to use this heading style in subsequent papers.
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`Unless at least one of the parties requests otherwise, we will not
`conduct an initial conference call as described in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). The
`parties must request an initial conference call if either party is aware of
`any conflicts or concerns with DUE DATES 6 or 7 set forth in the
`Appendix of this Scheduling Order. Any request for an initial conference
`call must be made no later than 25 days after the institution of trial.
`2. Standing Procedure for Requests for Conference Calls
`If the parties request a conference call, including an initial conference
`call, the parties must follow these procedures:
`a. Prior to requesting a conference call, the parties must confer in
`an effort to resolve any issue to be discussed with the Board, or
`be prepared to explain to the Board why such a conference was
`not possible.
`b. Parties may request a conference call by contacting the Board at
`the email address or telephone number listed above the caption
`of this Order. Requests via email are expected and preferred;
`requests via telephone should be reserved for time-critical
`circumstances. Requests by email must copy opposing counsel.
`Requests by telephone should include opposing counsel as
`practicable.
`c. The request must include a list of proposed issues and/or
`motions to be discussed during the call.
`
`2
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`
`d. The request may include a brief background discussion of the
`issue(s) and/or motion(s) to be discussed, but must not include
`arguments.
`e. The request must certify that the parties conferred in
`accordance with 2.a., and must indicate the result of the
`conference (e.g., whether the non-requesting party opposes or
`does not oppose the request).
`f. The request must include a list of dates and times when both
`parties are available for the call.
`3. Protective Order
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. If either party files a motion to seal
`before entry of a protective order, a jointly proposed protective order should
`be presented as an exhibit to the motion. 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; and the parties must explain why the proposed deviations from
`the default protective order are necessary.
`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 to isolated passages consisting entirely of
`
`3
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`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 understandable file history.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`4. 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.
`5. 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: (1) certify that it has conferred
`with the other party in an effort to resolve the dispute; (2) identify with
`specificity the issues for which agreement has not been reached; (3) identify
`
`4
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`the precise relief to be sought; and (4) propose specific dates and times at
`which both parties are available for the conference call.
`6. 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 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.
`7. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`a. Cross-examination begins after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`b. 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.
`
`5
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`
`8. 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.
`
`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
`DATES 6 and 7. Due to scheduling constraints, such as hearing room
`availability, the parties must request a conference call with the panel if
`there are any conflicts that arise with DUE DATE 7 as soon as
`practicable, which will be modified only upon a showing of good cause.
`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-
`
`6
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`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.
`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.7, above) 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.
`
`7
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`
`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.
`
`8
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .............................................................................. July 17, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... October 17, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................... November 19, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................... December 10, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .......................................................................... January 4, 2019
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................ January 11, 2019
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................ January 24, 2019
`Oral argument (if requested)
`
`
`
`
`9
`
`
`
`Case IPR2018-00038 (Patent 7,222,684 B2)
`Case IPR2018-00039 (Patent 7,950,978 B2)
`Case IPR2018-00040 (Patent 7,487,850 B2)
`
`PETITIONER:
`Larry Saret
`Rachel Bach
`Kenneth Albridge, III
`MICHAEL BEST & FRIEDRICH LLP
`llsaret@michaelbest.com
`rnbach@michaelbest.com
`kmalbridge@michaelbest.com
`
`PATENT OWNER:
`John Hutchins
`ANDREWS KURTH KENYON LLP
`jhutchins@kenyon.com
`
`
`10
`
`
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