Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Date: January 23, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ADVANCED VOICE RECOGNITION SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01352
`Patent 7,558,730 B2
`____________
`
`
`
`
`Before JOHN A. HUDALLA, MELISSA A. HAAPALA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Date: January 23, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ADVANCED VOICE RECOGNITION SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2019-01352
`Patent 7,558,730 B2
`____________
`
`
`
`
`Before JOHN A. HUDALLA, MELISSA A. HAAPALA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`IPR2019-01352
`Patent 7,558,730 B2
`
`
`A. GENERAL INSTRUCTIONS
`1.
`INITIAL CONFERENCE CALL
`The parties are directed to contact the Board within a month of this
`Scheduling Order if there is a need to discuss proposed changes to this 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
`Patent Trial and Appeal Board Consolidated Trial Practice Guide November
`2019, 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
`
`2
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`IPR2019-01352
`Patent 7,558,730 B2
`
`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 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 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
`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).
`
`3
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`IPR2019-01352
`Patent 7,558,730 B2
`
`
`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 should request a conference call with the Board
`no later than two weeks before 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. 9,497 (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
`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) (Order) (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,
`
`4
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`IPR2019-01352
`Patent 7,558,730 B2
`
`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’x B 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary guidance on the motion to amend and 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
`Petitioner’s reply and must be filed no later than three (3) weeks after
`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.
`
`5
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`IPR2019-01352
`Patent 7,558,730 B2
`
`
`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 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 this
`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.
`
`6
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`IPR2019-01352
`Patent 7,558,730 B2
`
`
`In stipulating different dates, 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-
`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 parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived; and
`b. a motion to amend the patent (37 C.F.R. § 42.121).
`2. DUE DATE 2
`Petitioner may file a reply to 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).
`
`7
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`IPR2019-01352
`Patent 7,558,730 B2
`
`5. DUE DATE 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)).
`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 before 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
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`
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`IPR2019-01352
`Patent 7,558,730 B2
`
`
`DUE DATE APPENDIX
`DUE DATE 1 ................................................................. April 16, 2020
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ..................................................................... July 9, 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 20, 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 .......................................................... September 10, 2020
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ............................................................... October 1, 2020
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition
`to the motion to amend
`Motion to exclude evidence
`DUE DATE 6 ............................................................... October 8, 2020
`Opposition to motion to exclude
`Request for pre-hearing conference
`DUE DATE 7 ..............................................................October 15, 2020
`Reply to opposition to motion to exclude
`DUE DATE 8 ..............................................................October 22, 2020
`Oral argument (if requested)
`
`
`
`
`9
`
`
`
`IPR2019-01352
`Patent 7,558,730 B2
`
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseIP.com
`paul.hart@eriseIP.com
`
`
`PATENT OWNER:
`
`Niky R. Bagley
`Michael C. Pomeroy
`BUETHER JOE & CARPENTER, LLC
`BJC-AVRS@bjciplaw.com
`Niky.Bagley@bjciplaw.com
`Michael.Pomeroy@bjciplaw.com
`
`
`
`10
`
`
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