`
`
`
`
`Paper 25
`Date: June 16, 2021
`
`Trials@uspto.gov
`571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE, INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00145
`Patent 8,812,993 B2
`
`
`
`
`
`
`
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
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`IPR2021-00145
`Patent 8,812,993 B2
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`A. GENERAL INSTRUCTIONS
`
`A.
`
`1.
`
`INITIAL AND ADDITIONAL CONFERENCE CALLS
`
`The parties must 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.
`
`B.
`
`2.
`
`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
`
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`IPR2021-00145
`Patent 8,812,993 B2
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`with the motion. It is the responsibility of the party whose confidential
`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.
`
`
`1 If the entity whose confidential information is at issue is not a party to the
`proceeding, please contact the Board.
`3
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`IPR2021-00145
`Patent 8,812,993 B2
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`DISCOVERY DISPUTES
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`C.
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`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.
`
`D.
`
`4.
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`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.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party must file the full transcript of the
`deposition rather than excerpts of only those portions being cited. After a
`deposition transcript has been submitted as an exhibit, all parties who
`subsequently cite to portions of the transcript must cite to the first-filed
`exhibit rather than submitting another copy of the same transcript.
`
`E.
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`5.
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`CROSS-EXAMINATION
`
`Except as the parties might otherwise agree, the following apply for
`each due date:
`Cross-examination ordinarily takes place after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(2).
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`IPR2021-00145
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`Cross-examination ordinarily ends no later than a week before the
`filing date for any paper in which the cross-examination testimony may be
`used. Id.
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`F.
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`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 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. 9,497 (Mar. 15, 2019) (“MTA Pilot Program Notice”); see also
`Consolidated Practice Guide at 67. If Patent Owner elects to request the
`Board’s preliminary guidance 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 the MTA Pilot
`Program Notice unless otherwise ordered by the Board in this proceeding.
`See also the Board’s Guidance on Motions to Amend (see
`https://go.usa.gov/xU6YV), Aqua Products, Inc. v. Matal, 872 F.3d 1290
`(Fed. Cir. 2017), Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper
`15 and IPR2018-01130, Paper 14 (PTAB Feb. 25, 2019) (precedential), and
`
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`IPR2021-00145
`Patent 8,812,993 B2
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`L&P Property Mgmt. v. Remarco Machinery & Tech., IPR2019-00255, Paper
`15 (PTAB June 18, 2019).
`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.
`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.
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`IPR2021-00145
`Patent 8,812,993 B2
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`ORAL ARGUMENT
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`G.
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`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 San Jose, California, USPTO Regional Office.
`The parties may request that the oral argument instead be held at the
`Detroit, Michigan, 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.
`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.
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`IPR2021-00145
`Patent 8,812,993 B2
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`B. DUE DATES
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`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
`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.
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`IPR2021-00145
`Patent 8,812,993 B2
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`1.
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`DUE DATE 1
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`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. Importantly, 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).
`
`2.
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`DUE DATE 2
`
`Petitioner may file a reply to Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
`3.
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`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
`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.
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`IPR2021-00145
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`4.
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`DUE DATE 4
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`Either party may file a request for oral argument (may not be extended
`by stipulation).
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`5.
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`DUE DATE 5
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`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.
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`DUE DATE 7
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`Either party may file a reply to an opposition to a motion to exclude
`evidence.
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`8.
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`DUE DATE 8
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`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.
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`IPR2021-00145
`Patent 8,812,993 B2
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`DUE DATE APPENDIX
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`DUE DATE 1 ...................................................................... September 8, 2021
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ....................................................................... December 1, 2021
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ......................................................................... January 12, 2022
`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 ......................................................................... February 2, 2022
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ....................................................................... February 23, 2022
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE 6 ............................................................................. March 2, 2022
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 ............................................................................. March 9, 2022
`Reply to opposition to motion to exclude
`DUE DATE 8 ........................................................................... March 17, 2022
`Oral argument (if requested)
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`2 If Patent Owner files neither a reply to Petitioner’s opposition to the MTA
`nor a revised MTA, the parties are directed to Section B(3) above.
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`IPR2021-00145
`Patent 8,812,993 B2
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`For PETITIONER:
`Walter Renner
`David Holt
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`
`Tiffany Miller
`James Heintz
`DLA PIPER LLP
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`For PATENT OWNER:
`Robert Asher
`Bruce Sunstein
`Timothy M. Murphy
`SUNSTEIN LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`
`Philip J. Graves
`HAGENS BERMAN SOBOL SHAPIRO LLP
`philipg@hbsslaw.com
`
`
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