Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 11
`
`Entered: September 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROHDE & SCHWARZ GMBH & CO., KG,
`Petitioner,
`
`v.
`
`TEKTRONIX, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00647
`Patent 8,675,719 B2
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`BAIN, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 11
`
`Entered: September 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROHDE & SCHWARZ GMBH & CO., KG,
`Petitioner,
`
`v.
`
`TEKTRONIX, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00647
`Patent 8,675,719 B2
`____________
`
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`SCOTT E. BAIN, Administrative Patent Judges.
`
`BAIN, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`A. GENERAL INSTRUCTIONS
`1.
`Initial Conference Call
`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions that have not been authorized in this Order or other
`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
`preparing for the initial conference call). A request for an initial conference
`call shall include a list of proposed motions, if any, to be discussed during
`the call.
`Patent Owner must confer with us before filing any Motion to
`2.
`Amend. See 37 C.F.R. § 42.121(a). Patent Owner should arrange for a
`conference call with the panel and opposing counsel at least 10 business days
`before DUE DATE 1 in order to satisfy the conferral requirement.
`3.
`Protective Order
`No protective order shall apply to this proceeding until the Board
`enters one. If either party files a motion to seal before entry of a protective
`order, a jointly proposed protective order shall be filed as an exhibit with the
`motion. The Board encourages the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See
`Practice Guide, App’x B (Default Protective Order). 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 between the two and explain why good cause exists to deviate
`from the default protective order.
`
`2
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`
`The Board has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in this proceeding should be
`limited to the minimum amount necessary to protect confidential
`information, and 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 may become 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 public interest
`in maintaining a complete and understandable file history. See Practice
`Guide 48,761.
`4.
`Discovery Disputes
`The Board encourages parties to resolve disputes relating to discovery
`on their own. 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.
`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 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.
`5.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, Appendix D, apply to this proceeding. The Board
`may impose an appropriate sanction for failure to adhere to the Testimony
`
`3
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`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.
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`Cross-examination ordinarily 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.
`7.
`Oral Argument
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Due Date Appendix.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria. The
`parties may request that the oral argument instead be held at the Denver,
`Colorado, USPTO Regional Office. The parties should meet and confer, and
`jointly propose the parties’ preference at the initial conference call, if
`
`4
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`requested. Alternatively, the parties may jointly file a paper stating their
`preference for the hearing location within one month of this order. Note that
`the Board may not be able to honor the parties’ preference of hearing
`location due to, among other things, the availability of hearing room
`resources and the needs of the panel. The Board will consider the location
`request and notify the parties accordingly if a request for change in location
`is granted.
`Seating in the Board’s hearing rooms may be limited, and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals will attend the argument on its behalf, the
`party should notify the Board as soon as possible, and no later than the
`request for oral argument. Parties should note that the earlier a request for
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
`B. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate 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 an extension of DUE
`DATES 6 and 7, or to the requests for oral hearing.
`In stipulating 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 (§ 42.64(b)(2)), to conduct cross-examination
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`
`5
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`
`1. DUE DATE 1
`Patent Owner may file—
`a. A response to the petition (37 C.F.R. § 42.120). If Patent Owner
`elects not to file a response, Patent Owner must arrange a conference call
`with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.
`b. A motion to amend the patent (37 C.F.R. § 42.121). 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. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent Owner
`should request a conference call with the Board no later than two weeks
`prior to DUE DATE 1. The parties are directed to the Board’s Guidance on
`Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV),
`and Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082
`(PTAB April 25, 2018) (Paper 13) (providing information and guidance on
`motions to amend).
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may file a reply to the opposition to the motion to
`amend.
`
`6
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`4. DUE DATE 4
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`5. DUE DATE 5
`Either party may file an opposition to a motion to exclude evidence.
`6. DUE DATE 6
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7. DUE DATE 7
`The oral argument (if requested by either party) shall be held on this
`date. Approximately one month prior to the argument, the Board will issue
`an order setting the start time of the hearing and the procedures that will
`govern the parties’ arguments.
`
`
`
`7
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................... December 11, 2018
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... March 11, 2019
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ............................................................................ April 11, 2019
`Patent Owner’s sur-reply to Petitioner’s reply
`Patent Owner’s reply to Petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................. May 13, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`Request for oral argument (parties may not stipulate to an
`extension for the request for oral argument)
`
`DUE DATE 5 ............................................................................. May 20, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................. May 28, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ............................................................................. June 19, 2019
`Oral argument (if requested)
`
`8
`
`
`
`IPR2018-00647
`Patent 8,675,719 B2
`
`For PETITIONER:
`Walter Renner
`Roberto Devoto
`Chris Marchese
`FISH & RICHARDSON P.C.
`renner@fr.com
`devoto@fr.com
`
`For PATENT OWNER:
`
`Michael A. Oblon
`Kevin J. Patariu
`PERKINS COIE LLP
`MOblon@perkinscoie.com
`KPatariu@perkinscoie.com
`
`
`
`9
`
`
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