Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 11
`Entered: August 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00416
`Patent 9,413,711 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`WHITE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper: 11
`Entered: August 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`VAPORSTREAM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00416
`Patent 9,413,711 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, STACEY G. WHITE, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`WHITE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2018-00416
`Patent 9,413,711 B2
`
`
`This Order sets a schedule for trial, including due dates for the parties
`
`to take action upon institution of the trial. See Appendix.
`
`A. INITIAL CONFERENCE
`
`The parties are directed to contact the Board within one month of the
`
`entry date for this Scheduling 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).
`
`B. MEET AND CONFER REQUIREMENT
`
`The parties are encouraged to engage in meaningful discussion before
`
`seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for relief
`
`with the Board. At a minimum, before requesting authorization, the parties
`
`shall confer with each other in a good-faith effort to resolve the issue for
`
`which relief is to be sought. Only if the parties cannot resolve the issue on
`
`their own may a party request a conference call with the Board in order to
`
`seek authorization to move for relief.1 In any request for a conference call
`
`with the Board, the requesting party shall: (1) certify that it has in good-
`
`faith conferred (or attempted to confer) with the other parties in an effort to
`
`resolve the issue; (2) identify with specificity the issue for which agreement
`
`has not been reached; (3) state the precise relief to be sought; and
`
`(4) propose specific dates and times at which both parties are available for
`
`the conference call.
`
`
`1 Patent Owner may file a motion to amend without prior authorization, but
`only after conferring with the Board. 37 C.F.R. § 42.121(a).
`
`2
`
`
`
`IPR2018-00416
`Patent 9,413,711 B2
`
`C. CONFIDENTIAL INFORMATION
`
`
`
`A protective order does not exist in a case until one is filed in the case
`
`and is approved by the Board. If a motion to seal is filed by either party, the
`
`proposed protective order should be presented as an exhibit to the motion.
`
`The parties are urged to operate under the Board’s default protective order,
`
`should that become necessary. See Default Protective Order, Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. at 48,769–71 (Appendix B). If the parties
`
`choose to propose a protective order deviating from the default protective
`
`order, they should submit the proposed protective order jointly. A marked-
`
`up comparison of the proposed and default protective orders should be
`
`presented as an additional exhibit to the motion to seal, so that the difference
`
`can be understood readily. The parties should contact the Board if they
`
`cannot agree on the terms of the proposed protective order.
`
`Information subject to a protective order will become public if
`
`identified in a final written decision in this proceeding. 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.
`
`D. CROSS-EXAMINATION
`
`Except as otherwise ordered or 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.
`
`3
`
`
`
`IPR2018-00416
`Patent 9,413,711 B2
`
`E. 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. at 48,768. The observations 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.
`
`F. DEPOSITIONS
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (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.
`
`G. PATENT OWNER’S MOTION TO AMEND
`
`
`
`Although the filing of a Motion to Amend is authorized under our
`
`Rules, Patent Owner must confer with us before filing any Motion to
`
`Amend, preferably at least ten (10) business days prior to DUE DATE 1.
`
`H. DUE DATES
`
`The Appendix specifies due dates for the parties to take action in this
`
`trial. The parties may stipulate to different dates for DUE DATES 1 through
`
`4
`
`
`
`IPR2018-00416
`Patent 9,413,711 B2
`
`5 (earlier or later, but no later than DUE DATE 6). A notice of any
`
`stipulation, specifically identifying the changed due dates, must be filed
`
`promptly with the Board. The parties may not stipulate to an extension of
`
`DUE DATES 6 and 7.
`
`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 D, above).
`
`
`
`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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.
`
`5
`
`
`
`IPR2018-00416
`Patent 9,413,711 B2
`
`
`4. DUE DATE 4
`
`a.
`
`Each party must file any observation on the cross-
`
`examination testimony of a reply witness (see section E, 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. Additionally, in its request for oral
`
`argument, each party should indicate its preferred location (if
`
`any) for the oral hearing: the main headquarters in Alexandria,
`
`Virginia or the Texas Regional Office in Dallas, Texas. Please
`
`note that, although the parties’ preferences will be considered, the
`
`location of the oral hearing will be decided by the Board based on
`
`hearing room resources.
`
`5. 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.
`
`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.
`
`
`
`6
`
`
`
`
`
`IPR2018-00416
`Patent 9,413,711 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ..................................... UPON REQUEST
`
`DUE DATE 1 ....................................................................... October 30, 2018
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ January 22, 2019
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... February 19, 2019
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ March 4, 2019
`
`Observations regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .......................................................................... March 22, 2019
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 .......................................................................... March 29, 2019
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ April 17, 2019
`
`Oral argument (if requested)
`
`
`
`7
`
`
`
`IPR2018-00416
`Patent 9,413,711 B2
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`
`PATENT OWNER:
`
`Michael F. Heim
`Douglas R. Wilson
`Blaine A. Larson
`HEIM PAYNE & CHORUSH, LLP
`mheim@hpcllp.com
`dwilson@hpcllp.com
`blarson.hpcllp.com
`
`Jamie T. Gallagher
`BIRCH TREE IP LAW & STRATEGY PLLC
`jamie@Birchtreeip.com
`
`8
`
`
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