`571.272.7822
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` Paper No. 13
` Entered: October 25, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2019-00613
`Patent 9,633,373 B21
`____________
`
`
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`1 Case IPR2019-01011 has been consolidated with this proceeding.
`
`
`
`
`
`IPR2019-00613
`Patent 9,633,373 B2
`
`
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`A. GENERAL INSTRUCTIONS
`1.
`Initial Conference Call2
`The parties are directed to contact the Board within one week 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.
`Discovery Disputes
`2.
`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.
`3.
`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. § 42.12. For example, reasonable expenses and
`
`
`2 The page/word limits for papers in this proceeding are set forth in
`37 C.F.R. § 42.24 (e.g., 14,000 words for Patent Owner’s response,
`5,600 words for Petitioner’s reply). Given the consolidation of the two
`proceedings, however, if either party believes additional pages/words are
`warranted, the parties shall confer with each other and request an initial
`conference call.
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`2
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`IPR2019-00613
`Patent 9,633,373 B2
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`attorneys’ fees incurred by any party may be levied on a person who
`impedes, delays, or frustrates the fair examination of a witness.
`4.
`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.
`5. Motion to Amend
`Pursuant to a Joint Stipulation by the parties, Patent Owner “agreed to
`waive its right to file a motion to amend” in IPR2019-00613 and IPR2019-
`01011. Paper 12, 4. Thus, no due dates are specified with a respect to a
`motion to amend.
`6.
`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
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`3
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`IPR2019-00613
`Patent 9,633,373 B2
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`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 the proceeding. The parties may stipulate different dates for DUE
`DATES 1 through 3, 5, and 6 (earlier or later, but no later than DUE DATE
`7). 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 4, 7, and 8.
`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
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`On September 17, 2019, Petitioner and Patent Owner filed a Joint
`Stipulation agreeing to extend by four weeks Due Dates 1–3 in the
`Scheduling Order for IPR2019-00613 entered on August 6, 2019.3 Paper 12.
`Accordingly, Due Dates 1–3 below have been modified to reflect the
`extension agreed to by the parties.
`1. DUE DATE 1
`Patent Owner may file 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
`
`3 The parties further agreed that if IPR2019-01011 is instituted, it should be
`consolidated and aligned with the schedule entered in IPR2019-00613.
`Paper 12, 3.
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`4
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`IPR2019-00613
`Patent 9,633,373 B2
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`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.
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`4. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`5. DUE DATE 5
`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.
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`IPR2019-00613
`Patent 9,633,373 B2
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`DUE DATE APPENDIX
`DUE DATE 1 ............................................................................ Nov. 25, 2019
`Patent Owner’s response to the petition
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`DUE DATE 2 ............................................................................ Feb. 18, 2020
`Petitioner’s reply to Patent Owner’s response to petition
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`DUE DATE 3 ............................................................................. Mar. 31, 2020
`Patent Owner’s sur-reply to reply
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`DUE DATE 4 ............................................................................. Mar. 24, 2020
`Request for oral argument (may not be extended by stipulation)
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`DUE DATE 5 ............................................................................. Apr. 14, 2020
`Motion to exclude evidence
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`DUE DATE 6 ............................................................................. Apr. 21, 2020
`Opposition to motion to exclude
`Request for prehearing conference
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`DUE DATE 7 ............................................................................ Apr. 28, 2020
`Reply to opposition to motion to exclude
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`DUE DATE 8 ............................................................................... May 5, 2020
`Oral argument (if requested)
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`IPR2019-00613
`Patent 9,633,373 B2
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`PETITIONER:
`
`Gabrielle E. Higgins
`Scott A. McKeown
`Christopher M. Bonny
`Victor Cheung
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`scott.mckeown@ropesgray.com
`christopher.bonny@ropesgray.com
`victor.cheung@ropesgray.com
`
`PATENT OWNER:
`
`Barry J. Bumgardner
`Matthew C. Juren
`Thomas C. Cecil
`NELSON BUMGARDNER ALBRITTON P.C.
`barry@nelbum.com
`matthew@nelbum.com
`tom@nelbum.com
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