Paper 9
`Trials@uspto.gov
`571-272-7822 Entered: November 29, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01091
`Patent 8,308,395 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`This Order sets a schedule for trial, including due dates for the parties
`to take action upon entry of the Decision to Institute. See Appendix. The trial
`will be administered in a just, speedy, and inexpensive manner such that
`pendency before the Board is no more than one year after institution. 37
`C.F.R. §§ 42.1(b) and 42.200(c).
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 29, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01091
`Patent 8,308,395 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`This Order sets a schedule for trial, including due dates for the parties
`to take action upon entry of the Decision to Institute. See Appendix. The trial
`will be administered in a just, speedy, and inexpensive manner such that
`pendency before the Board is no more than one year after institution. 37
`C.F.R. §§ 42.1(b) and 42.200(c).
`
`
`
`
`IPR2018-01091
`Patent 8,308,395 B2
`
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
`An initial conference call will be scheduled only upon request by
`either party within thirty (30) days of this Order. To request a conference
`call, the parties should consult with each other and submit a list of proposed
`dates and times for the call. If an initial conference call is scheduled, the
`parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Trial Practice Guide”), for guidance in
`preparing for the call, and should be prepared to discuss any proposed
`changes to the schedule and any motions the parties anticipate filing during
`the trial.
`2. Meet and Confer Requirement
`The parties are encouraged to engage in meaningful discussions
`before seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for
`relief with the Board. At a minimum, before requesting authorization, the
`parties shall confer with each other in a good-faith effort to resolve the issue
`for which relief is to be sought. Only if the parties cannot resolve the issue
`on their own may a party request a conference call with the Board in order to
`seek authorization to move for relief. In any request for a conference call
`with the Board, the requesting party shall: (1) certify that it has in good-faith
`conferred (or attempted to confer, if the request is a time-sensitive
`emergency) with the other party in an effort to resolve the issue; (2) identify
`with specificity, but without argument, the issue for which agreement has
`not been reached; (3) state the precise relief to be sought; and (4) propose
`specific dates and times for which both parties are available for the
`conference call.
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`2
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`IPR2018-01091
`Patent 8,308,395 B2
`
`3. 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 should be presented as an exhibit
`to 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
`Default Protective Order, Trial Practice Guide, 77 Fed. Reg. at 48,756 (App.
`B). 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 interest
`in maintaining a complete and understandable file history. See Trial Practice
`Guide, 77 Fed. Reg. at 48,761.
`4. Cross-Examination Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, 77 Fed. Reg. at 48,772 (App. D), apply to this
`proceeding. The Board may impose an appropriate sanction on any party
`
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`IPR2018-01091
`Patent 8,308,395 B2
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`who fails to adhere to the Testimony Guidelines, including reasonable
`expenses and attorney fees incurred by a party affected by another party’s
`misconduct. 37 C.F.R. § 42.12.
`Except as the parties might otherwise agree, for each due date—
`(1) cross-examination of a witness begins after any supplemental
`evidence is due; and (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. 37 C.F.R. § 42.53(d)(2). Should a party submit a
`deposition transcript of a witness’s testimony as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the testimony
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript shall cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
`5. 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 Appendix hereto.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the United States Patent and Trademark Office
`headquarters in Alexandria, Virginia. 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. The parties should note that
`
`4
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`IPR2018-01091
`Patent 8,308,395 B2
`
`the earlier a request for accommodation is made, the more likely the Board
`will be able to accommodate additional individuals.
`B. DUE DATES
`The Appendix specifies due dates for the parties to take action in this
`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 any
`stipulation, specifically identifying the changed due dates, must be filed
`promptly with the Board. The parties may not stipulate to an extension of
`DUE DATES 6 and 7.
`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
`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.
`1. Due Date 1
`The patent owner may file—
`a. A response to the petition (37 C.F.R. § 42.220), and
`b. A motion to amend the patent (37 C.F.R. § 42.221).
`The patent owner must file any such response or motion to amend by
`DUE DATE 1. If the patent owner elects not to file anything, the patent
`owner must arrange a conference call with the parties and the Board. The
`patent owner is cautioned that any arguments for patentability not raised
`and fully briefed in the response will be deemed waived.
`The patent owner may file a motion to amend without prior
`authorization from the Board. Nevertheless, the patent owner must confer
`with the Board before filing such a motion. 37 C.F.R. § 42.221(a). To satisfy
`
`5
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`IPR2018-01091
`Patent 8,308,395 B2
`
`this requirement, the 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, which can be found at
`https://www.uspto.gov/sites/default/files/documents/guidance_on_mot
`ions _to_amend_11_2017.pdf. In addition, the parties are directed to the
`Board’s decision in Western Digital Corp. v. SPEX Techs., Inc., Case
`IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (informative), which
`provides guidance on motions to amend.
`2. Due Date 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`3. Due Date 3
`The patent owner must file any sur-reply to the petitioner’s reply and
`any reply to the petitioner’s opposition to any motion to amend by DUE
`DATE 3.
`4. Due Date 4
`The petitioner must file any sur-reply to the patent owner’s reply to
`the opposition to the motion to amend, and 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.
`
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`IPR2018-01091
`Patent 8,308,395 B2
`
`
`6. Due Date 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`Either party may file a request for a pre-hearing conference.
`7. Due Date 7
`If requested by either party, an oral hearing will be held on DUE
`DATE 7.
`
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`IPR2018-01091
`Patent 8,308,395 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................ February 28, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. May 29, 2019
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... July 1, 2019
`Patent owner’s reply to Petitioner’s opposition to motion to amend
`Patent Owner’s sur-reply to Petitioner’s reply
`
`DUE DATE 4 ................................................................... July 29, 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 .................................................................August 5, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................... August 12, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ............................................................... August 26, 2019
`Oral argument (if requested)
`
`8
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`IPR2018-01091
`Patent 8,308,395 B2
`
`
`For PETITIONER:
`Joshua L. Goldberg
`Christopher P. Isaac
`Bhai A. Wawa
`Finnegan, Henderson, Firebox, Garrett, & Dunner, LLP
`joshua.goldberg@finnegan.com
`chris.isaac@finnegan.com
`abhay.watwe@finnegan.com
`
`
`For PATENT OWNER:
`Ryan Levy
`John Triggs
`Seth Ogden
`Patterson Intellectual Property Law PC
`rdl@iplawgroup.com
`jft@iplawgroup.com
`sro@iplawgroup.com
`
`Ralph Powers III
`Jon Wright
`Kyle Conklin
`Steve Merrill
`Daniel Yonan
`Sterne, Kessler, Goldstein, & Fox
`tpowers-PTAB@skgf.com
`jwright-PTAB@skgf.com
`kconklin-PTAB@skgf.com
`smerrill-PTAB@skgf.com
`dyonan-PTAB@skfg.com
`
`
`
`
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`
`9
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`
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