Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper No. 9
`Entered: October 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`Apple Inc.,
`Petitioner,
`
`v.
`
`Uniloc 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-00884
`Patent 8,539,552 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and SEAN P. O’HANLON,
`Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
` Paper No. 9
`Entered: October 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`Apple Inc.,
`Petitioner,
`
`v.
`
`Uniloc 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-00884
`Patent 8,539,552 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and SEAN P. O’HANLON,
`Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`IPR2018-00884
`Patent 8,539,552 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
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`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
`
`2
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`
`
`IPR2018-00884
`Patent 8,539,552 B1
`
`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.
`
`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.
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`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.
`
`3
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`
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`IPR2018-00884
`Patent 8,539,552 B1
`
`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. 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 a 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). The parties may not stipulate to
`
`4
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`
`
`IPR2018-00884
`Patent 8,539,552 B1
`
`an extension of DUE DATES 6 and 7, nor does stipulating to a different DUE
`
`DATE 4 modify the deadline, set in this Order, for requesting oral argument.
`
`
`
`If the parties stipulate to different due dates, a notice of the stipulation,
`
`specifically identifying the changed due dates, must be promptly filed. 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.
`
`1. DUE DATE 1
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`
`
`
`
`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).
`
`5
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`
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`IPR2018-00884
`Patent 8,539,552 B1
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`2. DUE DATE 2
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`
`
`
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`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
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`
`
`
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`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.
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`4. DUE DATE 4
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`
`
`Petitioner may file a sur-reply to Patent Owner’s reply to the opposition to
`
`the motion to amend.
`
`
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`Either party may file a motion to exclude evidence (37 C.F.R. § 42.64(c)).
`
`5. DUE DATE 5
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`
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`Either party may file an opposition to a motion to exclude evidence.
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`6. DUE DATE 6
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`
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`Either party may file a reply to an opposition to a motion to exclude
`
`evidence.
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`
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`Either party may request that the Board hold a pre-hearing conference.
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`7. DUE DATE 7
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`
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`The oral argument (if requested by either party) shall be held on this date.
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`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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`
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`6
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`
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`IPR2018-00884
`Patent 8,539,552 B1
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................... January 2, 2019
`
`
`
`
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................... April 2, 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 ................................................................................ May 2, 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 ................................................................................ June 3, 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 (may not be extended by stipulation)
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`DUE DATE 5 .............................................................................. June 10, 2019
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`
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`Opposition to motion to exclude
`
`DUE DATE 6 .............................................................................. June 17, 2019
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`
`
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`Reply to opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 ............................................................................... July 15, 2019
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`
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`
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`Oral argument (if requested)
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`
`
`7
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`
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`IPR2018-00884
`Patent 8,539,552 B1
`
`For PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`
`For PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Ray A. King
`Uniloc USA, Inc.
`ray.king@unilocusa.com
`
`8
`
`
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