Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: March 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioners,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01555
`Patent 7,848,439 B2
`____________
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: March 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioners,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01555
`Patent 7,848,439 B2
`____________
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2018-01555
`Patent 7,848,439 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.
`2.
`Conference Calls with the Board
`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 the issues for which
`agreement has not been reached, but must not include arguments; (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. We encourage the parties to resolve
`any disputes arising in the proceeding on their own and in accordance with the
`precepts set forth in 37 C.F.R. § 42.1(b).
`3.
`Protective Order and Confidential Information
`Papers and exhibits filed with the Board are public unless designated as
`confidential when filed. 37 C.F.R. § 42.14. Papers and exhibits may be filed as
`confidential if filed with a motion to seal. Id. Those papers and exhibits will
`remain under seal provisionally until the Board renders its decision on the motion.
`Id. A motion to seal must include a proposed protective order, or must refer to a
`protective order already approved in the proceeding. 37 C.F.R. § 42.54(a).
`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
`2
`
`
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`
`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 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 48,761.
`4. 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.
`5.
`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. §
`3
`
`
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`
`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.
`Cross-Examination
`6.
`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.
`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. The parties may jointly file
`a paper stating their preference for the hearing location within one month of this
`order. 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 accommodation is made, the more likely the Board
`will be able to accommodate additional individuals.
`4
`
`
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`
`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. The parties
`may not stipulate an extension of DUE DATES 6 and 7, or to the requests for oral
`hearing.
`In stipulating different times, the parties should consider the effect of the
`stipulation on times to object to evidence (37 U.S.C. § 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 U.S.C. § 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 U.S.C. § 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 U.S.C. §
`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).
`
`
`
`5
`
`
`
`IPR2018-01555
`Patent 7,848,439 B2
`
`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.
`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 U.S.C. § 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
`
`
`
`IPR2018-01165
`Patent 7,524,087 B1
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. June 11, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... September 11, 2019
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ....................................................................... October 11, 2019
`Patent Owner’s sur-reply to Petitioner’s reply to response to petition
`Patent Owner’s reply to Petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... November 12, 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 ................................................................... November 18, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 ................................................................... November 25, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 .................................................................... December 17, 2019
`Oral argument (if requested)
`
`
`
`
`7
`
`
`
`IPR2018-01165
`Patent 7,524,087 B1
`
`FOR PETITIONER:
`
`Stephen Korniczky
`Martin Bader
`Nam Kim
`Darren Franklin
`Ericka Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`nkim@sheppardmullin.com
`dranklin@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`
`FOR PATENT OWNER:
`
`Cyrus A. Morton
`Bryan J. Vogel
`Derrick J. Carman
`Stephanie A. Diehl
`Li Zhu
`Shui Li
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`sdiehl@robinskaplan.com
`sli@robinskaplan.com
`lzhu@robinskaplan.com
`
`
`8
`
`
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