`571-272-7822
`
`Paper 47
`Date: April 14, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)2
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`THIRD REVISED SCHEDULING ORDER
`
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in these
`proceedings based on petitions and motions for joinder filed in IPR2021-
`00734, IPR2021-00739, and IPR2021-00741, respectively.
`2 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`A. REVISED MOTION TO AMEND
`1.
`Introduction
`On April 11, 2022, Patent Owner filed a revised motion to amend
`(“revised MTA”) in accordance with our Second Revised Scheduling Order
`(Paper 29) entered on December 10, 2021, and the March 15, 2019 Federal
`Register notice regarding the pilot program relating to motion to amend
`practice at the Office. 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”). In accordance with the
`MTA Pilot, we revise the Second Revised Scheduling Order (Paper 29) to
`set subsequent due dates based on the date Patent Owner filed its revised
`MTA. See MTA Pilot, Appendix 1B (Revised MTA Timeline).
`In particular, this Third Revised Scheduling Order adds DUE DATES
`RMTA1 and RMTA2 and modifies and supersedes DUE DATE 5 and
`subsequent due dates as presented in the Second Revised Scheduling Order.
`Further, this Third Revised Scheduling Order supplements the instructions
`provided in our original Scheduling Order, including those discussing the
`content of the briefing related to the revised MTA. To the extent that our
`original Scheduling Order provides instructions that are not addressed in this
`Third Revised Scheduling Order, the original instructions remain in effect.
`2.
`Evidence and Depositions
`Generally speaking, new evidence (including declarations) may be
`submitted with every paper related to the revised MTA, except sur-replies.
`Specifically, both Petitioner’s opposition to the revised MTA and Patent
`
`
`
`2
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`Owner’s reply to that opposition may be accompanied by new evidence that
`responds to issues raised in the preliminary guidance (if provided) or in the
`corresponding revised MTA or opposition. Petitioner’s sur-reply may not be
`accompanied by new evidence other than deposition transcripts of the cross-
`examination of any reply witness.
`Once likely declarants are known, the parties should confer as to dates
`for scheduling all depositions related to the revised MTA after the relevant
`papers will be filed. The Board expects parties to make their declarants
`available for such depositions promptly, and to make their attorneys
`available to take and defend such depositions; any unavailability will not be
`a reason to adjust the schedule for briefing on a revised MTA absent
`extraordinary circumstances.
`If Petitioner submits a declaration with its opposition to the revised
`MTA, or Patent Owner submits a declaration with its reply to that
`opposition, the party should typically make such declarant available for
`deposition within 1 week after filing that declaration. As needed, the parties
`may wish to agree to shortened periods for making objections and serving
`supplemental evidence prior to a deposition. See 37 C.F.R. §§ 42.53(d)(2),
`42.64(a) and (b). In the absence of such an agreement, the parties shall
`schedule such depositions in advance of a due date for serving supplemental
`evidence. If, after receiving supplemental evidence, a party believes in good
`faith that the supplemental evidence requires further cross-examination of a
`declarant, the party should contact the Board for a conference call. Again, it
`is incumbent upon the parties to work cooperatively to schedule depositions
`of their declarants. Thus, the Board strongly encourages the parties to meet
`
`
`
`3
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`and confer as soon as practicable (including before anticipated declarations
`are submitted, if possible) to coordinate schedules.
`Because Patent Owner’s reply and Petitioner’s sur-reply as to the
`revised MTA are due near or after motions to exclude are due, the parties
`might not have an opportunity to object to evidence submitted with the reply
`or sur-reply and file a motion to exclude such evidence before the oral
`hearing. See 37 C.F.R. 42.64. Thus, if needed, a party may seek
`authorization to file a motion to exclude reply or sur-reply evidence after the
`oral hearing or may make an oral motion to exclude and argue such a motion
`at the oral hearing.
`B. DUE DATES
`This Order sets due dates for the parties to take action by DUE DATE
`RMTA1 and after. The parties may stipulate different dates for DUE
`DATES RMTA1, RMTA2, 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 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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`
`
`4
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`1. DUE DATE RMTA1
`Petitioner may file an opposition to Patent Owner’s revised MTA.
`Petitioner’s opposition to the revised MTA may only respond to issues
`raised in the revised MTA or the preliminary guidance (if provided).
`2. DUE DATE RMTA2
`Patent Owner may file a reply to Petitioner’s opposition to the revised
`MTA. Patent Owner’s reply to the opposition may only respond to issues
`raised in the opposition.
`3. DUE DATE 5
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`4. 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.
`5. DUE DATE 7A
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`6. DUE DATE 7B
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the revised MTA. Petitioner’s sur-reply may only respond to
`issues raised in the reply to the opposition.
`7. 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
`
`
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`5
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`an order setting the start time of the hearing and the procedures that will
`govern the parties’ arguments.
`
`
`
`
`6
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`THIRD REVISED DUE DATE APPENDIX
`
`DUE DATE RMTA 1 ............................................................... April 25, 2022
`Petitioner’s opposition to Patent Owner’s revised motion to amend
`DUE DATE RMTA 2 .................................................................. May 2, 2022
`Patent Owner’s reply to opposition to revised motion to amend
`DUE DATE 5 .............................................................................. May 4, 2022
`Motion to exclude evidence
`DUE DATE 6 .............................................................................. May 9, 2022
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7A ........................................................................... May 9, 2022
`Petitioner’s sur-reply to reply to opposition to revised motion to
`amend
`DUE DATE 7B ......................................................................... May 13, 2022
`Reply to opposition to motion to exclude
`DUE DATE 8 ............................................................................ May 20, 2022
`Oral argument (if requested)
`
`
`
`
`7
`
`
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`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`PETITIONER:
`
`Jonathan Detrixhe
`Peter Chassman
`jdetrixhe@reedsmith.com
`pchassman@reedsmith.com
`
`
`PETITIONER joinder
`
`Martha Hoplins
`Victoria Hao
`LAW OFFICES OF S.J. CHRISTINE YAN
`mhopkins@sjclawpc.com
`vhao@sjclawpc.com
`
`
`PATENT OWNER:
`
`Jay Kesan
`jay@jaykesan.com
`
`Alfonso Chan
`achan@shorechan.com
`
`
`
`
`
`8
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`