`571-272-7822
`
`
`
`
`
`
`
`
`
`Paper 8
`Date: June 8, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`
`A. GENERAL INSTRUCTIONS
`
`
`
`Initial and Additional Conference Calls
`
`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 Consolidated Trial Practice Guide (“Consolidated
`Practice Guide”) at 9–10, 65 (Nov. 2019), https://go.usa.gov/xpvPF
`(guidance in preparing for a conference call); see also 84 Fed. Reg. 64,280
`(Nov. 21, 2019). A request for an initial conference call must include a list of
`proposed motions, if any, to be discussed during the call.
`The parties may request additional conference calls as needed. Any
`email requesting a conference call with the Board should (a) copy all parties,
`(b) indicate generally the relief being requested or the subject matter of the
`conference call, (c) include multiple times when all parties are available, (d)
`state whether the opposing party opposes any relief requested, and (e) if
`opposed, either certify that the parties have met and conferred telephonically
`or in person to attempt to reach agreement, or explain why such meet and
`confer did not occur. The email may not contain substantive argument and,
`unless otherwise authorized, may not include attachments. See Consolidated
`Practice Guide at 9–10.
`
`
`
`Protective Order
`
`No protective order will apply to this proceeding until the Board
`enters one. If either party files a motion to seal before entry of a protective
`order, the parties must jointly file a proposed protective order as an exhibit
`with the motion. It is the responsibility of the party whose confidential
`
`
`
`
`2
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`information is at issue, not necessarily the proffering party, to file the motion
`to seal.1 The Board encourages the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See
`Consolidated Practice Guide at 107–122 (App. B, Protective Order
`Guidelines and 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 Consolidated
`Practice Guide at 21–22.
`
`
`
`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
`
`
`1 If the entity whose confidential information is at issue is not a party to the
`proceeding, please contact the Board.
`
`3
`
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`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
`
`The Testimony Guidelines appended to the Consolidated Practice
`Guide at 127–130 (App. D, Testimony Guidelines) 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, the Board may levy
`any party’s reasonable expenses and attorneys’ fees on a person who
`impedes, delays, or frustrates the fair examination of a witness.
`
`
`
`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.
`
` 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 prior to DUE DATE 1. See Section B below
`regarding DUE DATES.
`
`
`
`
`4
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`
`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”); see also
`Consolidated Practice Guide at 67. 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 must
`generally follow the practices and procedures described in MTA Pilot
`Program Notice unless otherwise ordered by the Board in this proceeding.
`Also, see 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).
`At DUE DATE 3, Patent Owner has the option to file a reply to the
`opposition to the motion to amend and preliminary guidance, or a revised
`motion to amend. See MTA Pilot Program Notice at 9500–01. Patent Owner
`may elect to file a revised motion to amend even if Patent Owner did not
`request to receive preliminary guidance on its motion to amend. A revised
`motion to amend must provide amendments, arguments, or evidence in a
`manner that is responsive to issues raised in the preliminary guidance or
`Petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board will 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 at 9501, App. 1B.
`
`
`
`
`5
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary guidance on the motion to amend, and Patent Owner files
`neither a reply to the opposition to the motion to amend nor 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 Petitioner’s reply. See
`MTA Pilot Program Notice at 9502. No new evidence may accompany the
`reply or the sur-reply in this situation.
`
`
`
`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 Denver, Colorado, USPTO Regional Office.
`The parties may request that the oral argument instead be held at the
`Dallas, Texas, USPTO Regional Office or 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.
`
`6
`
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`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.
`
`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, 5, and 6, as well as the portion of DUE DATE 2 related to Petitioner’s
`reply (earlier or later, but no later than DUE DATE 3 for Patent Owner’s sur-
`reply) and 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 2 related to
`Petitioner’s opposition to a motion to amend, or 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. The parties must promptly file a
`
`
`
`
`7
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`notice of the stipulation, specifically identifying the changed due dates. 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.
`
`
`
`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 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
`
`Petitioner may file a reply to Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
`
`
`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 or the preliminary
`guidance (if provided) or both; or
`b. a revised motion to amend.
`NOTE: If Patent Owner files neither of the above papers (a reply to
`the opposition or a revised motion to amend), and the Board has issued
`
`8
`
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`preliminary guidance, Petitioner may file a reply to the preliminary
`guidance, no later than three (3) weeks after DUE DATE 3. Patent Owner
`may file a sur-reply to Petitioner’s reply to the preliminary guidance no later
`than three (3) weeks after Petitioner’s reply.
`
`
`
`DUE DATE 4
`
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`
`
`
`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)).
`
`
`
`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.
`
`
`
`DUE DATE 7
`
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`
`
`DUE DATE 8
`
`The oral argument (if requested by either party) will 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.
`
`
`
`
`9
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................ August 31, 2020
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. November 23, 2020
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... January 4, 2021
`Patent Owner’s sur-reply to reply
`Patent Owner’s reply to opposition to motion to amend
`(or Patent Owner’s revised motion to amend)2
`
`DUE DATE 4 ....................................................................... January 25, 2021
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ..................................................................... February 16, 2021
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 ..................................................................... February 23, 2021
`Opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 ........................................................................... March 2, 2021
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ........................................................................... March 9, 2021
`Oral argument (if requested)
`
`
`
`2 If Patent Owner files neither a reply to Petitioner’s opposition to the MTA
`nor a revised MTA, see Section B(3) above.
`
`10
`
`
`
`
`IPR2020-00267
`Patent 8,432,173 B2
`
`
`For PETITIONER:
`Marc Pensabene
`Nicholas Whilt
`Ben Haber
`mpensabene@omm.com
`nwhilt@omm.com
`bhaber@irell.com
`
`For PATENT OWNER:
`Kent Shum
`Neil Rubin
`kshum@raklaw.com
`nrubin@raklaw.com
`
`
`
`
`
`11
`
`