Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 9
`Entered: June 13, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`NFL ENTERPRISES LLC,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`——————
`Case IPR2018-00463
`Patent 7,055,169 B2
`
`——————
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 9
`Entered: June 13, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————
`NFL ENTERPRISES LLC,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`——————
`Case IPR2018-00463
`Patent 7,055,169 B2
`
`——————
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`A. GENERAL INSTRUCTIONS
`
`1.
`
`INITIAL CONFERENCE CALL
`
`The parties are directed to contact the Board within 15 business days of
`the date of this Order is there is a need to discuss (a) proposed changes to this
`Scheduling Order (i.e., regarding DUE DATES 6 and 7); or (b) any proposed
`motions, not already authorized by our Rules or by this Scheduling Order,
`which the parties anticipate filing during the trial. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (setting forth
`guidance in preparing for the initial conference call). To request a conference
`call, the requesting party should submit a list of dates and times when both
`parties are available for a call.
`
`2.
`
`CONFIDENTIAL INFORMATION
`
`The parties must file confidential information using the appropriate
`availability indicator in PTAB E2E (e.g., “Board and Parties Only”),
`regardless of whose confidential information it is. It is the responsibility of
`the party whose confidential information is at issue, not necessarily the
`proffering party, to file the motion to seal, unless the party whose confidential
`information is at issue is not a party to this proceeding.
`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, the
`party should present a jointly proposed protective order as an exhibit to the
`motion. 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. See 37 C.F.R. 42.54(a).
`If a protective order is necessary, we encourage the parties to adopt the
`Board’s default protective order. See Default Protective Order, Office Patent
`2
`
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`Trial Practice Guide, 77 Fed. Reg. at 48,771, App. B. 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. Redactions to documents filed in this proceeding should be
`limited strictly to isolated passages consisting entirely of confidential
`information, and the thrust of the underlying argument or evidence must be
`clearly discernible from the redacted versions. Information subject to a
`protective order will become public if identified in a final written decision in
`this proceeding, and 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.
`
`3. MOTIONS TO AMEND
`
`Patent Owner may file one motion to amend the patent, but only after
`conferring with the Board. 37 C.F.R. § 42.121(a). Patent Owner must arrange
`for a conference call with the panel and opposing counsel at least ten (10)
`business days prior to DUE DATE 1 in order to satisfy the conferral
`requirement. For information and guidance on motions to amend, see Western
`Digital Corp. v. SPEX Techs., Inc., IPR2018-00082, 2018 WL 1989599 (PTAB
`Apr. 25, 2018) (informative).
`
`4. MOTIONS TO EXCLUDE
`
`A motion to exclude may only raise admissibility issues under the Federal
`Rules of Evidence, as applicable under 37 C.F.R. § 42.62. A party may not use
`the motion as additional briefing on any other topic, subject, or issue, for
`3
`
`
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`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.
`
`5.
`
`DISCOVERY DISPUTES
`
`We encourage 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 must 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 must (a) certify that it has conferred
`with the other party in an 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.
`
`DEPOSITIONS
`
`The Testimony Guidelines appended to the Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48,772, App. 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.
`
`
`
`4
`
`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party must 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.
`
`7.
`
`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.
`
`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. 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.
`
`
`
`5
`
`
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`IPR2018-00463
`Patent 7,055,169 B2
`
`B. 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). 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, they must promptly file a
`notice of the stipulation, specifically identifying the changed due dates. 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.
`
`1.
`
`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.
`
`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.
`6
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`
`
`IPR2018-00463
`Patent 7,055,169 B2
`
`
`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.
`
`4.
`
`DUE DATE 4
`
`Each party must file any motion for an observation on the cross-
`a.
`examination testimony of a reply witness 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.
`
`5.
`
`DUE DATE 5
`
`Each party must file any reply to a petitioner observation on
`a.
`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.
`
`
`
`7
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`
`
`Case IPR2018-00463
`Patent 7,055,169 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ...................................................................... September 4, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2 .................................................................... November 26, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ..................................................................... December 21, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`DUE DATE 4 ......................................................................... January 14, 2019
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 ......................................................................... January 28, 2019
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 ......................................................................... February 4, 2019
`Reply to opposition to motion to exclude
`DUE DATE 7 ....................................................................... February 26, 2019
`Oral argument (if requested)
`
`
`
`8
`
`
`
`Case IPR2018-00463
`Patent 7,055,169 B2
`
`
`PETITIONER:
`
`Stephen C. Stout
`Jeffrey T. Han
`VINSON & ELKINS L.L.P.
`sstout@velaw.com
`jhan@velaw.com
`
`
`PATENT OWNER:
`
`Joshua Goldberg
`joshua.goldberg@finnegan.com
`
`Erika Arner
`erika.arner@finnegan.com
`
`
`
`9
`
`
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