Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: January 8, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`YU ET AL.,
`Patent Owners.
`____________
`
`Case IPR2019-01258
`Patent 6,611,289
`____________
`
`Before WILLIAM V. SAINDON, MINN CHUNG, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: January 8, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`YU ET AL.,
`Patent Owners.
`____________
`
`Case IPR2019-01258
`Patent 6,611,289
`____________
`
`Before WILLIAM V. SAINDON, MINN CHUNG, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`IPR2019-01258
`Patent 6,611,289
`
`
`
`
`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 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 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. 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
`
`2
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`IPR2019-01258
`Patent 6,611,289
`
`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, 77 Fed. Reg. at 48,761.
`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.
`
`Testimony
`4.
`The parties are reminded that the Testimony Guidelines appended to the
`Practice Guide, at 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.
`
`Cross-Examination
`5.
`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.
`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
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`IPR2019-01258
`Patent 6,611,289
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`should request a conference call with the Board no later than two 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 MTA Pilot Program Notice unless
`otherwise ordered by the Board in this proceeding. The parties are further directed
`to the Board’s Guidance on Motions to Amend in view of Aqua Products
`(https://go.usa.gov/xU6YV), and Lectrosonics, Inc. v. Zaxcom, Inc., 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, as noted
`above) 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. B 1B.
`
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`IPR2019-01258
`Patent 6,611,289
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`As also discussed in the MTA Pilot Program Notice, if the Board issues
`preliminary board 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 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.
`
`Oral Argument
`7.
`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 request that
`the oral argument instead be held at the San Jose, California, 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.
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`IPR2019-01258
`Patent 6,611,289
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`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 the
`proceeding. The parties may stipulate different dates for DUE DATES 1, 2, 5, and
`6, as well as the portion of DUE DATE 3 related to Patent Owner’s sur-reply
`(earlier or later, but no later than DUE DATE 7). The parties may not stipulate to a
`different date for the portion of DUE DATE 3 related to Patent Owner’s reply to an
`opposition to a motion to amend (or Patent Owner’s revised motion to amend)
`without prior authorization from the Board. In stipulating to move any due dates in
`the scheduling order, the parties must be cognizant that the Board requires four
`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 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.
`
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`IPR2019-01258
`Patent 6,611,289
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`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).
`DUE DATE 2
`2.
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`DUE DATE 3
`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.
`DUE DATE 4
`4.
`Either party may file a request for oral argument (may not be extended by
`stipulation).
`
`DUE DATE 5
`5.
`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)).
`DUE DATE 6
`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.
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`IPR2019-01258
`Patent 6,611,289
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`DUE DATE 7
`7.
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`
`
`DUE DATE 8
`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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`IPR2019-01258
`Patent 6,611,289
`
`
`DUE DATE APPENDIX
`
`
`
`DUE DATE 1 ............................................................................. April 2, 2020
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ June 25, 2020
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 .......................................................................... August 6, 2020
`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 OR
`Patent Owner’s revised motion to amend
`
`DUE DATE 4 ........................................................................ August 31, 2020
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 .................................................................. September 22, 2020
`Petitioner’s sur-reply to the opposition to the motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 .................................................................. September 29, 2020
`Opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ......................................................................... October 6, 2020
`Reply to opposition to motion to exclude
`
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`IPR2019-01258
`Patent 6,611,289
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`DUE DATE 8 ....................................................................... October 13, 2020
`Oral argument (if requested)
`
`
`
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`IPR2019-01258
`Patent 6,611,289
`
`For PETITIONER:
`David W. O’Brien
`Andrew S. Ehmke
`Hong Shi
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`hong.shi.ipr@haynesboone.com
`
`For PATENT OWNERS:
`Robert G. Litts
`DAN JOHNSON LAW GROUP LLP
`robert@danjohnsonlawgroup.com
`
`
`
`11
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