Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: June 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00289
`Patent 8,872,646 B2
`____________
`
`
`Before JENNIFER S. BISK, CHARLES J. BOUDREAU, and
`GARTH D. BAER Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 8
`Entered: June 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`v.
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2018-00289
`Patent 8,872,646 B2
`____________
`
`
`Before JENNIFER S. BISK, CHARLES J. BOUDREAU, and
`GARTH D. BAER Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00289
`Patent 8,872,646 B2
`
`
`A. GENERAL INSTRUCTIONS
`
`1. INITIAL CONFERENCE CALL
`
`Unless a party 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. In
`
`lieu of such a call, we instruct the parties as follows:
`
`(a) If a party wishes to request an initial conference call, that party
`
`shall request the call no later than 25 days after the institution of
`
`trial;
`
`(b) A request for a conference call shall include: (a) a list of
`
`proposed motions, if any, to be discussed during the call and (b) a
`
`list of dates and times when the parties are available for the call;
`
`and
`
`(c) The parties shall be prepared to discuss during the initial
`
`conference call their concerns, if any, relating to the schedule in
`
`this proceeding as set forth below.
`
`Absent good cause shown, we will not conduct an initial conference call
`
`later than 25 days after the institution of a trial.
`
`2. 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
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`Case IPR2018-00289
`Patent 8,872,646 B2
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`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
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`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
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`public interest in maintaining a complete and understandable file history.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`3. MOTION 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). If Patent Owner
`
`intends to file a motion to amend, Patent Owner should arrange for a
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`conference call with the panel and opposing counsel at least one week before
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`DUE DATE 1 in order to satisfy the conferral requirement. We direct the
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`parties to the Board’s website for representative decisions relating to
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`Motions to Amend, among other topics. The parties may access these
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`representative decisions at: http://go.usa.gov/x9ARw.
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`Case IPR2018-00289
`Patent 8,872,646 B2
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`4. CONFERENCE CALLS
`
`Prior to requesting a conference call, the parties shall attempt in good
`
`faith to resolve the issue. The email requesting a conference shall certify
`
`that such an effort was made.
`
`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.
`
`The panel will not record conference calls or arrange for court
`
`reporters to be on such calls. If either party desires a transcript of a call, that
`
`party may provide a court reporter for the call without permission of the
`
`other party or the panel. In that case, the party must be sure to inform the
`
`other parties and the panel of the court reporter’s presence, either in advance
`
`of the call or at the very beginning of the call. In addition, during the
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`Case IPR2018-00289
`Patent 8,872,646 B2
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`conference call, that party should seek authorization to file the transcript
`
`(without any modification), as an exhibit.
`
`5. DEPOSITIONS
`
`The parties are advised that the Testimony Guidelines appended to the
`
`Office Patent Trial Practice Guide apply to this proceeding. See 77 Fed. Reg.
`
`48,756, 48,772 (Appendix D) (Aug. 14, 2012), http://go.usa.gov/x9ARh.
`
`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.
`
`6. MOTION TO EXCLUDE
`
`The parties shall not use a Motion to Exclude for any purpose other
`
`than to raise admissibility issues under the Federal Rules of Evidence. See
`
`37 C.F.R. §§ 42.61–64. If an issue arises with regard to a paper being out of
`
`proper scope under 37 C.F.R. § 42.23(a), the parties shall contact the Board
`
`in a timely manner to raise the matter. See, e.g., IPR2014-00148, Paper 42.
`
`7. SUPPLEMENTAL EVIDENCE AND SUPPLEMENTAL INFORMATION
`
`It is important to distinguish supplemental evidence (see 37 C.F.R.
`
`§ 42.64(b)(2)) from supplemental information (see 37 C.F.R. § 42.123). The
`
`5
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`Case IPR2018-00289
`Patent 8,872,646 B2
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`rules do not contemplate more than one cycle of objection to evidence and
`
`subsequent supplemental evidence to cure the objection.
`
`8. OBSERVATIONS ON CROSS-EXAMINATION
`
`Observations on cross-examination provide 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; circumventing the length requirement by
`
`use of footnote is inappropriate. Regardless of length, observations should
`
`not be argumentative. The opposing party may respond to the observation.
`
`Any response must be equally concise and specific.
`
`9. CLAIM CONSTRUCTION
`
`As stated in the Decision to Institute, any claim construction in the
`
`Decision is preliminary. The parties may further develop argument and
`
`evidence during the proceeding.
`
`B. SCHEDULE AND 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
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`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.
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`Case IPR2018-00289
`Patent 8,872,646 B2
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`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
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`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.1).
`
`1. CROSS EXAMINATION
`
`Except as the parties might otherwise agree, for each due date, cross-
`
`examination:
`
`(a) begins after any supplemental evidence is due; and
`
`(b) ends no later than a week before the filing date for any paper in
`
`which the cross-examination testimony is expected to be used.
`
`37 C.F.R. § 42.53(d)(2).
`
`By DUE DATE 1, the patent owner must file:
`
`2. DUE DATE 1
`
`(a) any response to the petition (37 C.F.R. § 42.120), and
`
`(b) any motion to amend the patent (37 C.F.R. § 42.121).
`
`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
`
`By DUE DATE 2, the petitioner must file:
`
`(a) any reply to the patent owner’s response and
`
`(b) any opposition to a motion to amend.
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`Case IPR2018-00289
`Patent 8,872,646 B2
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`4. DUE DATE 3
`
`By 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 4, each party must file:
`
`5. DUE DATE 4
`
`(a) any observations on the cross-examination testimony of a reply
`
`witness (see section A.8);
`
`(b) any motion to exclude evidence (37 C.F.R § 42.64(c)); and
`
`(c) any request for oral argument (37 C.F.R. § 42.70(a)).
`
`By DUE DATE 5, each party must file:
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`6. DUE DATE 5
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`(a) any response to an observation on cross-examination testimony;
`
`and
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`(b) any opposition to a motion to exclude evidence.
`
`By DUE DATE 6, each party must file any reply for a motion to
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`7. DUE DATE 6
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`exclude evidence.
`
`8. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
`
`DATE 7. Oral argument will be held at the USPTO main office in
`
`Alexandria, Virginia.
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`
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`Case IPR2018-00289
`Patent 8,872,646 B2
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`
`DUE DATE APPENDIX
`
`DUE DATE 1 ......................................................................... August 13, 2018
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... October 15, 2018
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... November 5, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... November 19, 2018
`Observations regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ...................................................................... December 3, 2018
`Response to observations
`
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... December 12, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................ January 24, 2019
`Oral argument (if requested)
`
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`9
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`Case IPR2018-00289
`Patent 8,872,646 B2
`
`
`
`
`PETITIONER:
`
`Andrew S. Ehmke
`Andy.ehmke.ipr@haynesboone.com
`
`Thomas W. Kelton
`Thomas.kelton.ipr@haynesboone.com
`
`Calmann Clements
`Calmann.clements.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Sean Burdick
`Sean.burdick@unilocusa.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`James Etheridge
`jim@etheridgelaw.com
`
`Jeffrey Huang
`jeff@etehridgelaw.com
`
`
`
`10
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