Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 14
`Entered: October 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)1
`____________
`
`
`Before SALLY C. MEDLEY, GREGG I. ANDERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`1 The parties are not authorized to use this caption. The parties will continue
`to use the individual case captions.
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 14
`Entered: October 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`FUJIFILM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00876 (Patent 6,462,905 B1)
`Case IPR2018-00877 (Patent 6,462,905 B1)1
`____________
`
`
`Before SALLY C. MEDLEY, GREGG I. ANDERSON, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`1 The parties are not authorized to use this caption. The parties will continue
`to use the individual case captions.
`
`
`
`
`
`
`Case IPR2013-00131
`Patent 6,635,196 B1
`
`
`
`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.
`
`2. 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.
`
`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
`
`
`
`2
`
`
`
`Case IPR2013-00131
`Patent 6,635,196 B1
`
`
`interest in maintaining a complete and understandable file history. See Practice
`
`Guide 48,761.
`
`3. 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.
`
`4. 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 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.
`
`5. 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.
`
`6. 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.
`
`
`
`3
`
`
`
`Case IPR2013-00131
`Patent 6,635,196 B1
`
`
`
`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 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 U.S.C. § 42.64(b)(1)), to supplement
`
`
`
`4
`
`
`
`Case IPR2013-00131
`Patent 6,635,196 B1
`
`
`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.
`
`1. DUE DATE 1
`
`Patent Owner may file—
`
`a. A response to the petition (37 U.S.C. § 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 U.S.C. § 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 U.S.C. § 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://www.uspto.gov/sites/default/files/documents/guidance_on_motions
`
`_to_amend_11_2017.pdf), 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.
`
`4. DUE DATE 4
`
`
`
`5
`
`
`
`Case IPR2013-00131
`Patent 6,635,196 B1
`
`
`
`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 U.S.C. § 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.
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`6
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`
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`Case IPR2018-00876 (Patent 6,462,905)
`Case IPR2018-00877 (Patent 6,462,905)
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .......................................................................... January 3, 2019
`
`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... March 27, 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 24, 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 21, 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 28, 2019
`
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................... June 4, 2019
`
`Reply to opposition to motion to exclude
`
`Request for pre-hearing conference
`
`7
`
`
`
`Case IPR2018-00876 (Patent 6,462,905)
`Case IPR2018-00877 (Patent 6,462,905)
`
`DUE DATE 7 ............................................................................. June 18, 2019
`
`Oral argument (if requested)
`
`
`
`
`
`PETITIONER:
`
`Richard Giunta
`Rgiunta-ptab@wolfgreenfield.com
`
`Michael Rader
`Mrader-ptab@wolfgreenfield.com
`
`Randy Pritzker
`Rpritzker-ptab@wolfgreenfield.com
`
`PATENT OWNER:
`
`Eliot Williams
`Eliot.williams@bakerbotts.com
`
`Robert Scheinfeld
`Robert.scheinfeld@bakerbotts.com
`
`Robert Maier
`Robert.maier@bakerbotts.com
`
`Jennifer Tempesta
`Jennifer.tempesta@bakerbotts.com
`
`Margaret Welsh
`Margaret.welsh@bakerbotts.com
`
`
`
`
`
`8
`
`
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