Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: March 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC.,
`Patent Owner.
`____________
`
`Case IPR2018-01497
`Patent 9,124,950 B2
`____________
`
`
`
`Before J. JOHN LEE, JESSICA C. KAISER, and JOHN R. KENNY,
`Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: March 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC.,
`Patent Owner.
`____________
`
`Case IPR2018-01497
`Patent 9,124,950 B2
`____________
`
`
`
`Before J. JOHN LEE, JESSICA C. KAISER, and JOHN R. KENNY,
`Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2018-01497
`Patent 9,124,950 B2
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
`The parties are directed to contact the Board within one month of the
`date of this decision if there is a need to discuss proposed changes to this
`Scheduling Order (i.e., regarding DUE DATES 6 and 7) or any proposed
`motions not authorized already by our Rules or by this Scheduling Order,
`which the parties anticipate filing during the trial. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (setting
`forth guidance in preparing for the initial conference call). A request for an
`initial conference call must include a list of proposed motions, if any, to be
`discussed during the call.
`2. Protective Order
`No protective order applies 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 presented as an exhibit to the
`motion. The parties may adopt the Board’s default protective order if they
`conclude that a protective order is necessary. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 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 that the thrust of the underlying argument or evidence
`2
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`IPR2018-01497
`Patent 9,124,950 B2
`
`must be clearly discernible to the public from the redacted versions.
`Information subject to a protective order may become public if identified in
`a final written decision in this proceeding, and a motion to expunge the
`information will not necessarily prevail over the public interest in
`maintaining a complete and understandable file history. See Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,761; 37 C.F.R. § 42.56.
`3. 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. See 37 C.F.R. § 42.121(a). Patent Owner should
`arrange for a conference call with the panel at least 10 business days before
`DUE DATE 1 in order to satisfy the requirement for a conference.
`4. Discovery Disputes
`The Board encourages the parties to resolve disputes relating to
`discovery on their own and in accordance with the precepts set forth in
`37 C.F.R. § 42.1(b). To the extent that a dispute arises between the parties
`relating to discovery, the parties shall meet and confer to resolve such a
`dispute before contacting the Board. If attempts to resolve the dispute fail,
`either 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.
`
`
`
`3
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`IPR2018-01497
`Patent 9,124,950 B2
`
`5. Depositions
`The Testimony Guidelines appended to the Office Patent Trial
`Practice Guide, 77 Fed. Reg. at 48,772, App. 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 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.
`6. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination takes place after any supplemental evidence
`is due. 37 C.F.R. § 42.53(d)(2).
`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. Id.
`7. Oral Argument
`Requests for oral argument shall 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
`
`
`
`4
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`IPR2018-01497
`Patent 9,124,950 B2
`
`notifies the parties otherwise, oral argument, if requested, will be held at the
`USPTO headquarters in Alexandria.
`The parties may request that the oral argument instead be held at the
`Denver, Colorado, USPTO Regional Office. 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.
`
`B. DUE DATES
`This Order sets due dates for the parties to take action after institution
`of the 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 the stipulation, specifically identifying the changed due dates,
`must be promptly filed. The parties may not stipulate to an extension of
`DUE DATES 6 and 7, nor to DUE DATE 4 with respect to the requirement
`for requesting oral argument. If either party anticipates the need to alter
`DUE DATE 7, the parties must schedule a conference call with the panel
`immediately upon identifying any conflict or potential conflict with DUE
`DATE 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-
`5
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`IPR2018-01497
`Patent 9,124,950 B2
`
`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
`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 Board. Patent Owner is cautioned that any
`arguments not raised in the response may be deemed waived.
`b.
`A motion to amend the patent (37 C.F.R. § 42.121). 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.
`A reply to the Patent Owner’s response.
`b.
`An opposition to the motion to amend, if Patent Owner filed
`such a motion.
`3. DUE DATE 3
`Patent Owner may file—
`a.
`A sur-reply to Petitioner’s reply.
`b.
`A reply to the opposition to the motion to amend, if Petitioner
`filed such an opposition.
`4. DUE DATE 4
`a.
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend, if such reply was filed.
`
`
`
`6
`
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`IPR2018-01497
`Patent 9,124,950 B2
`
`Either party may file a motion to exclude evidence (37 C.F.R
`b.
`§ 42.64(c)), and 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,
`if the opposing party filed such a motion.
`6. DUE DATE 6
`a.
`Either party may file a reply to an opposition to a motion to
`exclude evidence, if the opposing party filed such an opposition.
`b.
`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. The Board will issue an order setting the start time of the hearing and
`the procedures that will govern the parties’ arguments.
`
`
`
`
`
`7
`
`
`
`IPR2018-01497
`Patent 9,124,950 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................... June 7, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ..................................................................... September 9, 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 ......................................................................... October 7, 2019
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the
`petition
`Patent Owner’s reply to Petitioner’s opposition to the motion to amend
`DUE DATE 4 ..................................................................... November 7, 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 ................................................................... November 14, 2019
`Opposition to motion to exclude
`DUE DATE 6 ................................................................... November 21, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`DUE DATE 7 .................................................................... December 18, 2019
`Oral argument (if requested)
`
`
`
`
`
`8
`
`
`
`IPR2018-01497
`Patent 9,124,950 B2
`
`FOR PETITIONER:
`Colin Heideman
`Joseph Re
`Christie Matthaei
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2cbh@knobbe.com
`2jrr@knobbe.com
`2crw@knobbe.com
`
`FOR PATENT OWNER:
`Bryan Wilson
`Adam Underwood
`CARERY RODRIGUEZ MILIAN GONYA, LLP
`bwilson@careyrodriguez
`aunderwood@careyrodriguez.com
`
`
`
`
`
`9
`
`
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