Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: June 27, 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 IPR2018-00389
`Patent 8,712,723 B1
`
`_______________
`
`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: June 27, 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 IPR2018-00389
`Patent 8,712,723 B1
`
`_______________
`
`
`
`Before SALLY C. MEDLEY, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2018-00389
`Patent 8,712,723 B1
`
`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 contact the Board within a month of this
`
`decision if there is a need to discuss proposed changes to this Scheduling
`Order or proposed motions. See Office Patent Trial Practice Guide, 77 Fed.
`
`2
`
`
`
`IPR2018-00389
`Patent 8,712,723 B1
`
`Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the
`initial conference call).
`
`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 3
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`
`5. DUE DATE 4
`a.
`Each party must file any motion for an observation 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. Parties are advised that the Panel will not authorize motions
`
`3
`
`
`
`IPR2018-00389
`Patent 8,712,723 B1
`
`to exclude replies (or portions thereof) alleged to contain arguments that are
`outside the scope of a proper reply under 37 C.F.R. § 42.23(b). The Panel
`will determine whether a party’s reply is outside the scope of a proper reply
`when the Panel reviews all of the parties’ briefs and prepares a final written
`decision.
`6. DUE DATE 5
`a.
`Each party must file any response to an 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.
`
`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.
`The panel is available to hear oral argument, if requested, at the
`USPTO main office in Alexandria, Virginia, or the Texas Regional Office,
`in Dallas, Texas. The Board will set and identify the location in the order
`setting oral argument.
`
`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).
`
`4
`
`
`
`IPR2018-00389
`Patent 8,712,723 B1
`
`
`Cross-examination ends no later than a week before the filing
`2.
`date for any paper in which the cross-examination testimony is expected to
`be used. Id.
`
`C. 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 48,768. 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. MOTION TO AMEND
`
`The parties are reminded that 37 C.F.R. § 42.24 was amended
`effective May 19, 2015, and that the page limits that pertain to motions to
`amend are as follows: any motion to amend is limited to 25 pages;
`Petitioner’s opposition to any motion to amend is limited to 25 pages; and
`Patent Owner’s reply to the opposition to any motion to amend is limited to
`12 pages. 37 C.F.R. §§ 42.24(a)–(c). The claim listing does not count
`towards the page limit for a motion to amend. 37 C.F.R. § 42.24(a)(1).
`The parties are also directed to the Board’s Guidance on Motions to
`Amend in view of Aqua Products (Nov. 21, 2017), posted on the USPTO
`website and accessible directly via the following URL:
`
`5
`
`
`
`IPR2018-00389
`Patent 8,712,723 B1
`
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_t
`o_amend_11_2017.pdf.
`
`E. PATENT OWNER RESPONSE AND PETITIONER’S REPLY
`
`Effective May 2, 2016, 37 C.F.R. § 42.24 was amended to provide
`that the patent owner response for an inter partes review is limited to 14,000
`words, and that Petitioner’s reply to the patent owner response is limited to
`5,600 words. See 37 C.F.R. §§ 42.24(b)(2), 42.24(c)(1); Amendments to the
`Rules of Practice for Trials Before the Patent and Trial Appeal Board, Final
`Rule, 81 Fed. Reg. 18,750, 18,765 (April 1, 2016).
`
`F. FORMAT AND FILING OF DOCUMENTS
`
`The parties are reminded that 37 C.F.R. § 42.6 was amended effective
`May 19, 2015, and now requires the use of 14-point, Times New Roman
`proportional font, with normal spacing. The parties should familiarize
`themselves with the requirements of 37 C.F.R. § 42.6. Any filing that does
`not comply with 37 C.F.R. § 42.6 may be expunged.
`
`
`
`
`6
`
`
`
`IPR2018-00389
`Patent 8,712,723 B1
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .............................................. Upon Request
`
`DUE DATE 1 ................................................................................... 10/2/2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ...................................................................................... 1/2/2019
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................................... 2/4/2019
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................................... 2/25/2019
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument (see Section A above)
`
`DUE DATE 5 ................................................................................... 3/11/2019
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................................... 3/18/2019
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ..................................................................................... 4/2/2019
`Oral argument (if requested)
`
`
`7
`
`
`
`IPR2018-00389
`Patent 8,712,723 B1
`
`For PETITIONER:
`Andrew S. Ehmke
`Michael S. Parsons
`andy.ehmke.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`Brett Mangrum
`Sean D. Burdick
`Ryan Loveless
`James Etheridge
`Jeffrey Huang
`brett@etheridgelaw.com
`sean.burdick@unilocusa.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`8
`
`
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