Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
` Paper No. 11
`
`
`
`
` Entered: September 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`M & K HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00696
`Patent 9,113,163 B2
`Case IPR2018-00697
`Patent 9,191,673 B2
`Case IPR2018-00698
`Patent 9,197,896 B2
`____________
`
`Before KARL D. EASTHOM, MELISSA A. HAAPALA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`SCHEDULING ORDER1
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Scheduling Order applies to each of the three listed cases. The parties
`are not authorized to employ this heading style.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
` Paper No. 11
`
`
`
`
` Entered: September 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`M & K HOLDINGS INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00696
`Patent 9,113,163 B2
`Case IPR2018-00697
`Patent 9,191,673 B2
`Case IPR2018-00698
`Patent 9,197,896 B2
`____________
`
`Before KARL D. EASTHOM, MELISSA A. HAAPALA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`SCHEDULING ORDER1
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Scheduling Order applies to each of the three listed cases. The parties
`are not authorized to employ this heading style.
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`
`A.
`
`INITIAL CONFERENCE CALL
`
`The panel did not schedule a conference call for these cases. The
`
`parties should contact the Board to request a call if any issues arise during
`
`trial. The information below pertains to the instant cases.
`
`B.
`
`CONFIDENTIAL INFORMATION
`
`The parties must file confidential information using the appropriate
`
`availability indicator in PTAB End to End (e.g., “Board and Parties Only”),
`
`regardless of whose confidential information it is. See 37 C.F.R. § 42.14
`
`(“The record of a proceeding, including documents and things, shall be made
`
`available to the public, except as otherwise ordered. A party intending a
`
`document or thing to be sealed shall file a motion to seal concurrent with the
`
`filing of the document or thing to be sealed. The document or thing shall be
`
`provisionally sealed on receipt of the motion and remain so pending the
`
`outcome of the decision on the motion.”).
`
`A protective order does not take effect until the parties file a
`
`protective order approved by the Board. If either of the parties files a
`
`motion to seal, the proposed protective order should be presented as an
`
`exhibit to the motion. The Board urges the parties to operate under the
`
`Board’s default protective order. See Default Protective Order, Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48769–71 (App. B) (Aug.
`
`14, 2012). If the parties propose a protective order deviating from the
`
`default protective order, they should submit the proposed 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 differences
`
`2
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`are highlighted. The parties should contact the Board if they cannot agree
`
`on the terms of the proposed protective order.
`
`The Board has a strong interest in the public availability of the
`
`proceedings.
`
`1.
`
`Redactions
`
`Redactions should be limited strictly to isolated passages consisting of
`
`confidential information. The thrust of the underlying argument or evidence
`
`must be discernable from the redacted version.
`
`2.
`
`Confidential Information in Final Written Decisions
`
` 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 48761.
`
`C. 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. Regardless of whether the parties stipulate to a change of
`
`DUE DATE 4, requests for oral argument must be filed no later than the date
`
`set forth in this order for DUE DATE 4, for Board planning purposes.
`
`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
`
`3
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`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 Testimony Guidelines appended to the Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. at 48772–73 (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.
`
`1.
`
`DUE DATE 1
`
`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).
`
`Patent Owner must file any such response or motion to amend by
`
`DUE DATE 1. If Patent Owner elects not to file anything, 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
`
`will be deemed waived.
`
`2.
`
`DUE DATE 2
`
`Petitioner must file any reply to Patent Owner’s response and
`
`opposition to the motion to amend by DUE DATE 2.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`
`3.
`
`DUE DATE 3
`
`Patent Owner must file any sur-reply to Petitioner’s reply and any
`
`reply to Petitioner’s opposition to Patent Owner’s motion to amend by DUE
`
`DATE 3.
`
`4.
`
`DUE DATE 4
`
`a. Petitioner must file any sur-reply to Patent Owner’s reply to the
`
`opposition to the motion to amend 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 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.
`
`Either party may request that the Board hold a pre-hearing conference.
`
`7.
`
`DUE DATE 7
`
`The oral argument (if requested by either party) is set for DUE
`
`DATE 7.
`
`D. 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).
`
`5
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`
`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.
`
`E. DISCOVERY DISPUTES
`
`The panel encourages the 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 shall meet and confer to resolve such a
`
`dispute before contacting the Board. If attempts to resolve the dispute fail,
`
`either 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 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.
`
`E. MOTIONS 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. 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.
`
`
`
`
`
`6
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................... December 10, 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 10, 2019
`
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the
`
`petition
`
`Patent Owner’s reply to Petitioner’s opposition to the motion to
`
`amend
`
`DUE DATE 4 ............................................................................. May 10, 2019
`
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition
`
`to the 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 17, 2019
`
`Opposition to motion to exclude
`
`7
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`DUE DATE 6 ............................................................................. May 24, 2019
`
`Reply to opposition to motion to exclude
`
`Request for pre-hearing conference
`
`DUE DATE 7 ............................................................................... June 4, 2019
`
`Oral argument (if requested)
`
`
`
`
`
`
`
`8
`
`
`
`IPR2018-00696, Patent 9,113,163 B2
`IPR2018-00697, Patent 9,191,673 B2
`IPR2018-00698, Patent 9,197,896 B2
`
`PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Quadeer A. Ahmed
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`quadeerahmed@paulhastings.com
`
`
`PATENT OWNER:
`John A. Bauer
`Kongsik Kim
`Jonathon P. Western
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY and POPEO, P.C.
`jabauer@mintz.com
`kkim@mintz.com
`jpwestern@mintz.com
`
`
`9
`
`
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