Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: April 12, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION,
`HTC AMERICA, INC. and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01476
`Patent 7,764,711 B2
`____________
`
`
`Before THU A. DANG, BARBARA A. BENOIT, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: April 12, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION,
`HTC AMERICA, INC. and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01476
`Patent 7,764,711 B2
`____________
`
`
`Before THU A. DANG, BARBARA A. BENOIT, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`
`A. GENERAL INSTRUCTIONS
`
`Initial Conference Call
`1.
`The parties are directed to contact the Board within one 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.
`48756, 48765–66 (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 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 parties may 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 the
`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. Information subject to a
`
`2
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`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, 48761.
`
`Discovery Disputes
`3.
`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.
`In any request for a conference call with the Board to resolve a
`discovery 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 the issues for which agreement has not been reached; (c) identify
`the precise relief to be sought; and (d) propose specific dates and times at
`which both parties are available for the conference call.
`
`Testimony
`4.
`The Testimony Guidelines appended to the 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 in this
`proceeding, the submitting party shall file the full transcript of the deposition
`rather than excerpts of only those portions being cited. After a deposition
`
`3
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`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.
`
`Cross-Examination
`5.
`Except as the parties might otherwise agree, for each due date—
`a.
`Cross-examination takes place after any supplemental evidence
`is due. 37 C.F.R. § 42.53(d)(2).
`b.
`Cross-examination ends no later than one week before the filing
`date for any paper in which the cross-examination testimony is expected to
`be used. Id.
`
`6. Motion to Amend
`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 (2) weeks prior to DUE DATE 1. See Section B below
`regarding DUE DATES.
`Patent Owner has the option to receive preliminary guidance from the
`Board on its motion to amend. See Notice Regarding a New Pilot Program
`Concerning Motion to Amend Practice and Procedures in Trial Proceedings
`under the America Invents Act before the Patent Trial and Appeal Board,
`84 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”). If
`Patent Owner elects to request preliminary guidance from the Board on its
`motion, it must do so in its motion to amend filed on DUE DATE 1.
`Any motion to amend and briefing related to such a motion shall
`generally follow the practices and procedures described in the MTA Pilot
`
`4
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`Program Notice unless otherwise ordered by the Board in this proceeding.
`The parties are further directed to the Guidance on Motions to Amend in
`view of Aqua Products (https://go.usa.gov/xU6YV), and the decision in
`Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129 (Paper 15) (PTAB
`Feb. 25, 2019) (precedential).
`As indicated in the MTA Pilot Program Notice, Patent Owner has the
`option at DUE DATE 3 to file a revised motion to amend (instead of a reply)
`after receiving Petitioner’s opposition to the original motion to amend and/or
`after receiving the Board’s preliminary guidance (if requested). A revised
`motion to amend must provide amendments, arguments, and/or evidence in a
`manner that is responsive to issues raised in the preliminary guidance and/or
`Petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board shall enter
`a revised scheduling order setting the briefing schedule for that revised
`motion and adjusting other due dates as needed. See MTA Pilot Program
`Notice, App’x B 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary guidance on the motion to amend and the Patent Owner
`does not file either a reply to the opposition to the motion to amend or a
`revised motion to amend at DUE DATE 3, Petitioner may file a reply to the
`Board’s preliminary guidance, no later than three (3) weeks after DUE
`DATE 3. The reply may only respond to issues raised in the preliminary
`guidance. Patent Owner may file a sur-reply in response to Petitioner’s
`reply to the Board’s preliminary guidance. The sur-reply may only respond
`to arguments made in the reply and must be filed no later than three (3)
`weeks after the Petitioner’s reply. No new evidence may accompany the
`reply or the sur-reply in this situation.
`
`5
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`7.
`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.
`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 trial. The parties may stipulate to different dates for DUE DATES 1
`through 3, 5, and 6 (earlier or later, but no later than DUE DATE 7).
`In stipulating to change any due dates in the scheduling order, the
`parties must be cognizant that the Board requires four (4) weeks after the
`filing of an opposition to the motion to amend (or the due date for the
`opposition, if none is filed) for the Board to issue its preliminary guidance, if
`requested by Patent Owner. A notice of the stipulation, specifically
`identifying the changed due dates, must be promptly filed. The parties may
`not stipulate to an extension of DUE DATES 4, 7, or 8.
`
`6
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`Additionally, the parties should consider the effect of any 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
`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).
`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 also file either:
`a. a reply to the opposition to the motion to amend and preliminary
`board guidance (if provided); or
`b. a revised motion to amend.
`4. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`5. DUE DATE 5
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend.
`
`7
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`6. DUE DATE 6
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`8. DUE DATE 8
`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.
`
`8
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ................................................................................ July 8, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... October 1, 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 ................................................................... November 13, 2019
`Patent Owner’s sur-reply to Petitioner’s reply
`Patent Owner’s reply to Petitioner’s opposition to the motion to
`amend OR Patent Owner’s revised motion to amend
`
`DUE DATE 4 ...................................................................... December 3, 2019
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 .................................................................... December 20, 2019
`Petitioner’s sur-reply to the opposition to the motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 .......................................................................... January 2, 2019
`Opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 .......................................................................... January 9, 2019
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ........................................................................ January 14, 2020
`Oral argument (if requested)
`
`9
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`
`For PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Callie A. Pendergrass
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`Callie.Pendergrass@eriseip.com
`
`Stephen Korniczky
`Martin Bader
`Nam Kim
`Ericka Schulz
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`nkim@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`Bing Ai
`Vinay Sathe
`Babak Tehranchi
`Kevin Patariu
`John Schnurer
`PERKINS COIE LLP
`Ai-ptab@perkinscoie.com
`VSathe@perkinscoie.com
`BTehranchi@perkinscoie.com
`KPatariu@perkinscoie.com
`JSchnurer@perkinscoie.com
`
`
`For PATENT OWNER:
`
`Cyrus A. Morton
`Bryan J. Vogel
`Derrick J. Carman
`
`10
`
`
`
`IPR2018-01476
`Patent 7,764,711 B2
`Stephanie A. Diehl
`Li Zhu
`Shui Li
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`sdiehl@robinskaplan.com
`lzhu@robinskaplan.com
`sli@robinskaplan.com
`
`
`11
`
`
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