Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Entered: February 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`v.
`QUALCOMM INC.,
`Patent Owner.
`
`
`Cases IPR2018-01275
`Patent 9,203,940 B2
`
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 13
`Entered: February 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`v.
`QUALCOMM INC.,
`Patent Owner.
`
`
`Cases IPR2018-01275
`Patent 9,203,940 B2
`
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-01275
`Patent 9,203,940 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
`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.
`Protective Order
`2.
`No protective order shall apply to these proceedings 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 these proceedings should be
`limited to the minimum amount necessary to protect confidential
`information, and the thrust of the underlying argument or evidence must be
`
`2
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`
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`IPR2018-01275
`Patent 9,203,940 B2
`
`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 these proceedings, 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.
`4.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, Appendix D, apply to these proceedings. 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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`IPR2018-01275
`Patent 9,203,940 B2
`
`
`Oral Argument
`6.
`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.
`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 in each
`proceeding after institution of the proceedings. 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 of the date to file requests for oral
`hearing.
`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
`
`4
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`IPR2018-01275
`Patent 9,203,940 B2
`
`(§ 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 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).
`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.
`
`5
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`IPR2018-01275
`Patent 9,203,940 B2
`
`4. DUE DATE 4
`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 C.F.R.
`§ 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.
`
`
`
`
`
`
`6
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`
`
`IPR2018-01275
`Patent 9,203,940 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ May 14, 2019
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ August 14, 2019
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. September 16, 2019
`Patent owner’s sur-reply to reply
`Patent owner’s reply to opposition to motion to amend
`
`DUE DATE 4 ....................................................................... October 15, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ....................................................................... October 22, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 ....................................................................... October 29, 2019
`Reply to opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 .................................................................. November 12, 2019
`Oral argument (if requested)
`
`
`7
`
`
`
`IPR2018-01275
`Patent 9,203,940 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`FISH & RICHARDSON, P.C.
`axf-ptab@fr.com
`rozylowicz@fr.com
`riffe@fr.com
`
`PATENT OWNER:
`
`Eliot Williams
`Brian W. Oaks
`Chad Walters
`Charles Yeh
`Joseph Akalski
`Jessica Lin
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`brian.oaks@bakerbotts.com
`chad.walters@bakerbotts.com
`charles.yeh@bakerbotts.com
`joe.akalski@bakerbotts.com
`jessica.lin@bakerbotts.com
`
`8
`
`
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