Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 10
`Entered: October 25, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FEIT ELECTRIC COMPANY, INC.,
`Petitioner,
`
`v.
`
`PHILIPS LIGHTING HOLDING B.V.,
`Patent Owner.
`
`Case IPR2018-00921
`Patent 6,586,890 B2
`
`
`
`
`
`Before TREVOR M. JEFFERSON, MIRIAM L. QUINN, and
`JASON M. REPKO, Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: October 25, 2018
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FEIT ELECTRIC COMPANY, INC.,
`Petitioner,
`
`v.
`
`PHILIPS LIGHTING HOLDING B.V.,
`Patent Owner.
`
`Case IPR2018-00921
`Patent 6,586,890 B2
`
`
`
`
`
`Before TREVOR M. JEFFERSON, MIRIAM L. QUINN, and
`JASON M. REPKO, Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2018-00921
`Patent 6,586,890 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
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`or proposed motions that have not been authorized in this Order or other
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`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
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`preparing for the initial conference call). A request for an initial conference
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`call shall include a list of proposed motions, if any, to be discussed during
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`the call.
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`2.
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`Protective Order
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`No protective order shall apply to this proceeding until the Board
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`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
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`Practice Guide, App’x B (Default Protective Order). If the parties choose to
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`propose a protective order deviating from the default protective order, they
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`must submit the proposed protective order jointly along with a marked-up
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`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
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`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
`
`2
`
`
`
`IPR2018-00921
`Patent 6,586,890 B2
`
`clearly discernible from the redacted versions. We also advise the parties
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`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
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`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
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`may impose an appropriate sanction for failure to adhere to the Testimony
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`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`5.
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`Cross-Examination
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`Except as the parties might otherwise agree, for each due date:
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`Cross-examination ordinarily takes place after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
`
`Cross-examination ordinarily ends no later than a week before the
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`filing date for any paper in which the cross-examination testimony is
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`expected to be used. Id.
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`3
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`
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`IPR2018-00921
`Patent 6,586,890 B2
`
`6.
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`Oral Argument
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`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
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`parties may not stipulate to an extension of the request for oral argument
`
`beyond the date set forth in the Due Date Appendix.
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`Unless the Board notifies the parties otherwise, oral argument, if requested,
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`will be held at the USPTO headquarters in Alexandria.
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`The parties may request that the oral argument instead be held at the
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`Dallas, Texas, USPTO Regional Office. The parties should meet and confer,
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`and jointly propose the parties’ preference at the initial conference call, if
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`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
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`is granted.
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`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
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`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.
`
`
`
`4
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`
`
`IPR2018-00921
`Patent 6,586,890 B2
`
`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
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be promptly filed. The parties may not stipulate an extension of DUE
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`DATES 6 and 7, or to the requests for oral hearing.
`
`In stipulating different times, the parties should consider the effect of
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`the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (§ 42.64(b)(2)), to conduct cross-examination
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`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
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`examination testimony.
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`1. DUE DATE 1
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`Patent Owner may file—
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`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
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`with the parties and the Board. Patent Owner is cautioned that any
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`arguments for patentability not raised in the response may be deemed
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`waived.
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`b. A motion to amend the patent (37 C.F.R. § 42.121). Patent Owner
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`may file a motion to amend without prior authorization from the Board.
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`Nevertheless, Patent Owner must confer with the Board before filing such a
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`motion. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent Owner
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`should request a conference call with the Board no later than two weeks
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`prior to DUE DATE 1. The parties are directed to the Board’s Guidance on
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`Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV),
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`5
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`
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`IPR2018-00921
`Patent 6,586,890 B2
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`and Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082
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`(PTAB April 25, 2018) (Paper 13) (providing information and guidance on
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`motions to amend).
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`2. DUE DATE 2
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`Petitioner may file a reply to the Patent Owner’s response.
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`Petitioner may file an opposition to the motion to amend.
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`3. DUE DATE 3
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`Patent Owner may file a sur-reply to Petitioner’s reply.
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`Patent Owner may file a reply to the opposition to the motion to
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`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)).
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`5. DUE DATE 5
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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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`Either party may file a reply to an opposition to a motion to exclude
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`evidence.
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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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`The oral argument (if requested by either party) shall be held on this
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`date. Approximately one month prior to the argument, the Board will issue
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`an order setting the start time of the hearing and the procedures that will
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`govern the parties’ arguments.
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`6
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`
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`IPR2018-00921
`Patent 6,586,890 B2
`
`DUE DATE APPENDIX
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`DUE DATE 1 ....................................................................... January 22, 2019
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 ........................................................................... April 22, 2019
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ............................................................................ May 22, 2019
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`Patent owner’s sur-reply to reply
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`Patent owner’s reply to opposition to motion to amend
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`DUE DATE 4 ............................................................................ June 24, 2019
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`Petitioner’s sur-reply to reply to opposition to motion to amend
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`Motion to exclude evidence
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`Request for oral argument (may not be extended by stipulation)
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`DUE DATE 5 ............................................................................... July 1, 2019
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`Opposition to motion to exclude
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`DUE DATE 6 ............................................................................... July 8, 2019
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`Reply to opposition to motion to exclude
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`Request for prehearing conference
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`DUE DATE 7 ............................................................................. July 24, 2019
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`Oral argument (if requested)
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`
`
`7
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`
`
`IPR2018-00921
`Patent 6,586,890 B2
`
`PETITIONER:
`
`Michael D. Specht
`Joseph E. Mutschelknaus
`Daniel Yonan
`STERNE, KESSLER, GOLDSTEIN & FOX
`mspecht-PTAB@sternekessler.com
`jmutsche-PTAB@sternekessler.com
`dyonan-PTAB@sternekessler.com
`
`PATENT OWNER:
`
`C. Brandon Rash
`Kenie Ho
`Forrest A. Jones
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`brandon.rash@finnegan.com
`kenie.ho@finnegan.com
`forrest.jones@finnegan.com
`
`
`8
`
`
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