Paper No. 11
`Trials@uspto.gov
`571-272-7822 Entered: July 2, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00345
`Patent 7,047,196 B2
`____________
`
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and
`ALEX S. YAP, Administrative Patent Judges
`
`YAP, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 2, 2018
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00345
`Patent 7,047,196 B2
`____________
`
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and
`ALEX S. YAP, Administrative Patent Judges
`
`YAP, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`IPR2018-00345
`Patent 7,047,196 B2
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`I. DUE DATES
`This Order sets forth 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).
`The parties may not stipulate to an extension of DUE DATES 6 and 7, and
`with respect to DUE DATE 4, may not stipulate to an extension of the date
`set forth in this Order for requesting oral argument.
`If the parties stipulate to different due dates, notice of the stipulation
`specifically identifying the changed due dates must be promptly filed. 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.
`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.
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`2
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`IPR2018-00345
`Patent 7,047,196 B2
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`DUE DATE 1
`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. Neither party may incorporate by
`reference any analysis or reasoning expressed in the Decision on Institution
`review.
`
`DUE DATE 2
`2.
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`
`DUE DATE 3
`3.
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`
`DUE DATE 4
`4.
`Each party must file any motion for observation on the cross-
`a.
`examination testimony of a reply witness (see section E, below) 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.
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`IPR2018-00345
`Patent 7,047,196 B2
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`DUE DATE 5
`5.
`Each party must file any response to an observation on cross-
`a.
`examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 5.
`
`DUE DATE 6
`6.
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`DUE DATE 7
`7.
`Oral argument (if requested by either party) is set for DUE DATE 7.
`
`
`II. INITIAL CONFERENCE CALL
`The parties are directed to contact the Board
`(TRIALS@USPTO.GOV) within one month of this Order if there is a need
`to discuss proposed 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).
`
`
`III. PROTECTIVE ORDER
`A protective order does not exist in this proceeding, and will not exist
`until a party files a motion to seal that includes a proposed protective order,
`and the proposed protective order is approved by the Board. See 37 C.F.R.
`42.54(a). The motion to seal must include a certification that the moving
`party has in good faith conferred or attempted to confer with other affected
`parties in an effort to resolve any dispute. Id. A party filing confidential
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`IPR2018-00345
`Patent 7,047,196 B2
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`information must use the appropriate availability indicator in PTAB E2E,
`regardless of who owns the confidential information. The owner of the
`confidential information, not necessarily the party filing the information,
`must file the motion to seal and bears the burden of showing the information
`for which protection is sought is confidential information and should be
`sealed. The motion must balance the strong public interest in maintaining a
`complete and understandable record with any need of a party to rely on the
`subject information and to keep the information confidential. See Argentum
`Pharmaceuticals LLC v. Alcon Research, Ltd., Case IPR2017-01053 (PTAB
`January 19, 2018) (Paper 27); Corning Optical Communications RF, LLC, v.
`PPC Broadband, Inc., Case IPR2014-00440 (PTAB April 14, 2015) (Paper
`47).
`
`We encourage the parties to adopt the Board’s default protective order
`if they conclude that a protective order is necessary in this proceeding. See
`Default Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. at
`48,769–71, App. B. If the parties file a proposed protective order that
`deviates from the default protective order, they must submit the proposed
`protective order jointly, together with a marked-up copy showing the
`differences between the default and proposed protective orders.
` The Board has a strong interest in the public availability of
`proceedings. We advise the parties that redactions to documents filed in this
`proceeding should be limited to isolated passages consisting entirely of
`confidential information, and that the thrust of the underlying argument or
`evidence must be clearly discernible from redacted documents. 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
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`IPR2018-00345
`Patent 7,047,196 B2
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`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.
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`IPR2018-00345
`Patent 7,047,196 B2
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`IV. 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.
`
`
`V. 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. at 48,756. 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.
`
`
`VI. MOTION TO AMEND
`Although the filing of a Motion to Amend is authorized under our
`Rules, the patent owner must confer with the Board before filing any Motion
`to Amend. See 37 C.F.R. § 42.121(a). A conference call to satisfy the
`requirement of 37 C.F.R. § 42.121(a) must be scheduled no less than ten
`(10) business days prior to DUE DATE 1.
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`IPR2018-00345
`Patent 7,047,196 B2
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`VII. MOTION TO EXCLUDE
`A Motion to Exclude shall only raise admissibility issues under the
`
`Federal Rules of Evidence, and not be used as additional briefing on any
`other topic, subject, or issue, for example, any assertion that a certain brief
`or evidentiary submission exceeds the proper scope for such brief or
`submission. In case of an issue based on exceeding the proper scope of a
`submission, the parties must raise the matter by initiating a conference call
`with the Board.
`
`VIII. MISCELLANEOUS
`The parties shall file any order of a court, or the International Trade
`
`Commission, construing or interpreting any claim term of the challenged
`patent within seven days of issuance of that order. Similarly, the parties
`shall file any order addressing the patentability of any claim of the
`challenged patent within seven days. Such orders shall be filed as an exhibit
`with a corresponding email sent to TRIALS@USPTO.GOV identifying the
`filing by tribunal and issue date, and also the claim term(s) construed or the
`claim(s) ruled upon.
`When filing an exhibit, the parties should provide a descriptive name
`for the exhibit and not just label it as Exhibit ##. The PTAB’s filing system
`already identifies exhibits by the exhibit number and providing a description
`for each exhibit enables the Board to quickly find relevant exhibits without
`reference to separate papers.
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`IPR2018-00345
`Patent 7,047,196 B2
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`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................... July 27, 2018
`
`DUE DATE 1 .............................................................................. Sept. 4, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
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`DUE DATE 2 ............................................................................ Nov. 13, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ............................................................................. Dec. 10, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ............................................................................. Dec. 24, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
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`DUE DATE 5 ................................................................................ Jan. 7, 2019
`Response to observation
`Opposition to motion to exclude
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`DUE DATE 6 .............................................................................. Jan. 14, 2019
`Reply to opposition to motion to exclude
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`DUE DATE 7 .............................................................................. Jan. 28, 2019
`Oral argument (if requested)
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`9
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`IPR2018-00345
`Patent 7,047,196 B2
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`PETITIONER:
`James L. Day
`Daniel Callaway
`FARELLA BRAUN + MARTEL LLP
`jday@fbm.com
`dcallaway@fbm.com
`
`Leo L. Lam
`KEKER, VAN NEST & PETERS LLP
`llam@keker.com
`
`
`PATENT OWNER:
`Joshua L. Goldberg
`Jacob A. Schroeder
`Cory C. Bell
`Daniel Klodowski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joshua.goldberg@finnegan.com
`jacob.schroeder@finnegan.com
`cory.bell@finnegan.com
`daniel.klodowski@finnegan.com
`
`John S. Ferrell
`Wade C. Yamazaki
`CARR & FERRELL LLP
`jsferrell@carrferrell.com
`wyamazaki@carrferrell.com
`
`
`10
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