Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 7
`Entered: April 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00043
`Patent 9,454,748 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 7
`Entered: April 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00043
`Patent 9,454,748 B2
`____________
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`
`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 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, nor does stipulating to a different DUE DATE 4 modify the
`deadline, set in this Order, for requesting an oral argument.
`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
`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 confer and to contact the Board within two
`(2) weeks of the earliest mailing date of this Decision on Institution if there
`is a need to discuss proposed changes to this Scheduling Order or proposed
`motions. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`2
`
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`48,765–66 (Aug. 14, 2012) (setting forth guidance in preparing for the initial
`conference call). Patent Owner is reminded that it must confer with the
`Board before filing a Motion to Amend. 37 C.F.R. § 42.121(a). Patent
`Owner should contact the Board to request such a conference, if necessary,
`at least two (2) weeks before DUE DATE 1.
`
`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 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.
`
`3. 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.
`
`4. DUE DATE 31
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`
`
`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.
`3
`
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`
`5. DUE DATE 4
`a.
`Each party must file any observations on the cross-examination
`testimony of a reply witness (see section C, below) 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.
`
`6. DUE DATE 5
`a.
`Each party must file any response to any observations 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.
`
`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`Demonstrative exhibits may be used at oral argument. Please note
`that demonstrative exhibits are not evidence, but merely a visual aid at the
`oral arguments. Demonstrative exhibits may not introduce new evidence or
`raise new arguments, but instead should cite to evidence in the record. The
`parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The
`Board of Regents of the University of Michigan, Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65) and CBS Interactive Inc. v. Helferich
`
`4
`
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`Patent Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013)
`(Paper 118), for guidance regarding the appropriate content of demonstrative
`exhibits.
`
`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 one week before the filing
`date for any paper in which the cross-examination testimony is expected to
`be used. Id.
`
`C. OBSERVATIONS ON CROSS-EXAMINATION
`Submitting observations 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. PROTECTIVE ORDER
`No protective order has been entered in this proceeding. The parties
`are reminded of the requirement for a protective order when filing a motion
`
`5
`
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`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.
`E.
`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 a good faith 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.
`
`
`6
`
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ............................................................................. June 26, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... September 17, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ....................................................................... October 16, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ..................................................................... November 6, 2018
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ................................................................... November 20, 2018
`Response to observations
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................... November 27, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................... December 14, 2018
`Oral argument (if requested)
`
`
`7
`
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`
`
`PETITIONER:
`
`David W. O’Brien
`Raghav Bajaj
`David L. McCombs
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`Jonathan Stroud
`Roshan Mansinghani
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`
`PATENT OWNER:
`
`Terry L. Watt
`CROWE & DUNLEVY
`terry.watt@crowedunlevy.com
`
`Matthew J. Antonelli
`Michael E. Ellis
`Larry D. Thompson, Jr.
`ANTONELLI, HARRINGTON & THOMPSON LLP
`matt@ahtlawfirm.com
`michael@ahtlawfirm.com
`larry@ahlawfirm.com
`
`
`
`
`
`8
`
`
`
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