Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`Paper: 11
`Entered: November 15, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2018-01008 and IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009 and IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010 and IPR2018-01014 (Patent 8,515,825 B1)1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Scheduling Order applies to each of these cases. We exercise our
`discretion to issue one Order to be docketed in each case. The parties are
`not authorized to use a multi-proceeding caption.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`Paper: 11
`Entered: November 15, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHOPIFY, INC.,
`Petitioner,
`
`v.
`
`DDR HOLDINGS, LLC,
`Patent Owner.
`____________
`
`IPR2018-01008 and IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009 and IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010 and IPR2018-01014 (Patent 8,515,825 B1)1
`____________
`
`
`
`Before CARL M. DEFRANCO, PATRICK M. BOUCHER, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
`
`FINAMORE, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Scheduling Order applies to each of these cases. We exercise our
`discretion to issue one Order to be docketed in each case. The parties are
`not authorized to use a multi-proceeding caption.
`
`
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`A. GENERAL INSTRUCTIONS
`1. Request for an Initial Conference Call
`An initial conference call is not scheduled in this case. A party may
`request an initial conference call within twenty-five (25) days after the
`institution of trial if there is a need to discuss proposed changes to this 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) (available at https://go.usa.gov/xU7GK)
`(“Practice Guide”) (guidance in preparing for the initial conference call).
`A party requesting an initial conference call shall: (a) identify the
`requested relief, e.g., proposed changes to the schedule, proposed motions;
`and (b) propose two or more dates and times when both parties are available
`for the call. When an initial conference call is scheduled in response to a
`request, the parties should be prepared to discuss any concerns relating to the
`schedule in this proceeding.
`
`2. Protective Order
`No protective order shall apply to this proceeding unless the parties
`file one and the Board approves it. 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, 77 Fed. Reg. at 48,771 (App. B) (the
`“Default Protective Order”). If the parties choose to propose a protective
`order deviating from the Default Protective Order, they must explain why
`good cause exists to deviate from the Default Protective Order and must file
`as exhibits the proposed protective order and a marked-up comparison
`
`2
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`showing the differences between the proposed protective order and the
`Default Protective Order.
`If either party files a motion to seal before entry of a protective order,
`the motion to seal should include as an exhibit a proposed protective order
`that has been discussed with the opposing party and, preferably, be jointly
`proposed. If the protective order is not jointly proposed, the proponent of
`the order should identify where the parties differ in the proposed language of
`the 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 interest
`in maintaining a complete and understandable file history. See Practice
`Guide, 77 Fed. Reg. at 48,761.
`3. Resolution of Disputes
`The Board encourages parties to resolve disputes, including disputes
`relating to discovery, on their own and in accordance with the precepts of
`securing a just, speedy, and inexpensive resolution, as set forth in 37 C.F.R.
`§ 42.1(b). To the extent that a dispute arises between the parties, the parties
`shall 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
`
`3
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`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
`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
`any issue for which agreement has not been reached; (c) identify the precise
`relief to be sought; and (d) propose two or more specific dates and times at
`which both parties are available for the conference call.
`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.
`Whenever a party submits a deposition transcript as an exhibit, 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, any party who subsequently cites to portions of
`the transcript shall cite to the filed exhibit rather than submitting another
`copy of the same transcript.
`
`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).
`
`4
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`
`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.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria, Virginia.
`The parties may request that the oral argument instead be held at the Rocky
`Mountain Regional Office in Denver, Colorado. 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
`
`5
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
`7. Word Count/Page Limit/Type Face Requirements
`The parties shall comply with 37 C.F.R. § 42.24 and be familiar with
`Board interpretations of that regulation. For example, “[e]xcessive wording
`in figures, drawings or images, deleting spacing between words, or using
`excessive acronyms or abbreviations for word phrases, in order to bypass the
`rules on word count, are not reasonable.” Google Inc. v. Makor Issues &
`Rights Ltd., No. IPR2016-01535, slip op. at 7 (PTAB, Dec. 1, 2016)
`(Paper 8). See, e.g., Arctic Cat Inc. v. Polaris Indus. Inc., No.
`IPR2017-00433 (PTAB, June 22, 2017) (Paper 15); Google Inc. v. Porto
`Tech. Co. Ltd., No. IPR2016-00022, (PTAB, Nov. 23, 2016) (Paper 25);
`Electro Sci. Indus., Inc. v. Hamamatsu Photonics, K.K., No.
`IPR2016-01364, slip op. at 1 (PTAB, Jan. 17, 2017) (Paper 8) (explaining
`“our rules impose a page/word limit on all requests for relief”). Cutting and
`pasting text into a document as an image is unreasonable unless the text is
`ancillary to an existing image or the text comprises pre-existing labels as
`part of a figure, or unless any added text is included manually in the final
`word count. The excessive deletion of spaces in citations may be deemed
`inappropriate—the parties are to make reasonable efforts to comply with
`accepted citation formats. See Axon Enter., Inc. v. Digital Ally, Inc., No.
`IPR2017-00375, slip op. at 2, n.2 (PTAB, June 6, 2017) (Paper 9)
`(cautioning petitioner that the failure to use normal citations in order to
`reduce the word count may result in sanctions). Counsel for both parties
`will review the cited papers above, and by signing the certification under 37
`
`6
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`C.F.R. § 42.24(d), counsel is attesting that any filing they make in this
`proceeding is in compliance with our regulations as interpreted in the above
`cited papers. Failure to comply with these requirements may result in
`expungement of any paper or brief not in compliance and/or sanctions.
`8. Motion for Pro Hac Vice Admission
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause. 37 C.F.R. § 42.10(c). The parties are
`authorized in the Notice of Filing Date Accorded to Petition to file motions
`for pro hac vice admission. A pro hac vice motion may be filed no sooner
`than twenty-one (21) days after service of the petition, and any opposition
`must be filed no later than one week after the filing of the underlying
`motion. No reply to any opposition shall be filed unless further authorized.
`
`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. Regardless of whether the parties stipulate to a change of
`DUE DATE 4, any request for oral argument must be filed no later than the
`date for DUE DATE 4 set forth in this Order, for the Board’s planning
`purposes. The parties may not stipulate an extension of DUE DATE 6 or
`DUE DATE 7.
`In stipulating different dates, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)),
`
`7
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`
`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
`Patent Owner may file—
`A response to the petition (37 C.F.R. § 42.120). If Patent
`a.
`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.
`A motion to amend the patent (37 C.F.R. § 42.121). Patent
`b.
`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 (available at
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions
`_to_amend_11_2017.pdf) and to Western Digital Corp. v. SPEX Techs.,
`Inc., No. 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.
`
`
`
`
`8
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply. See Trial
`Practice Guide Update, 14–15, available at https://go.usa.gov/xU7GP;
`see also 83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the
`availability of the Trial Practice Guide Update).
`Patent Owner may file a reply to the opposition to the motion to
`amend.
`
`4. DUE DATE 4
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend. See Trial Practice Guide Update, 14–16.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)). See Trial Practice Guide Update, 16–18.
`Either party may file a request for oral argument (37 C.F.R.
`§ 42.70(a)).
`
`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.
`
`9
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`
`DUE DATE APPENDIX
`
`
`DUE DATE 1
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2
`Petitioner’s reply to Patent Owner response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3
`Patent Owner’s sur-reply to reply
`Patent Owner’s reply to opposition to motion to amend
`DUE DATE 4
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE TO REQUEST ORAL ARGUMENT
`
`DUE DATE 5
`Opposition to motion to exclude
`DUE DATE 6
`Reply to opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7
`Oral argument (if requested)
`
`
`
`
`
`10
`
`2/5/2019
`
`4/26/2019
`
`5/24/2019
`
`6/14/2019
`
`Same as
`Due Date 4
`but parties
`may not
`modify
`6/28/2019
`
`7/10/2019
`
`7/25/2019
`
`
`
`IPR2018-01008, IPR2018-01011 (Patent 9,639,876 B1)
`IPR2018-01009, IPR2018-01012 (Patent 9,043,228 B1)
`IPR2010-01010, IPR2018-01014 (Patent 8,515,825 B1)
`
`PETITIONER:
`
`Michael McNamara
`mmcnamara@mintz.com
`
`William Meunier
`wameunier@mintz.com
`
`
`
`
`PATENT OWNER:
`
`Louis Hoffman
`donald@valuablepatents.com
`
`Justin Lesko
`justinlesko@patentit.com
`
`
`
`
`11
`
`
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