Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Date: December 10, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`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)1
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`SECOND REVISED SCHEDULING ORDER
`
`
`
`
`
`1 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
`
`
`571-272-7822
`
`Paper 29
`Date: December 10, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`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)1
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`SECOND REVISED SCHEDULING ORDER
`
`
`
`
`
`1 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)
`The panel issued a Revised Scheduling Order in each of these
`proceedings on October 15, 2021, to accommodate the parties’ filing of
`additional briefing to address issues of patent ownership and standing. See,
`e.g., IPR2021-00375, Paper 20. Subsequently, Patent Owner filed a Motion
`to Amend in each proceeding, along with corresponding requests for
`preliminary guidance. See, e.g., IPR2021-00375, Paper 27. To allow ample
`time for the Board to issue its preliminary guidance on each Motion to
`Amend, DUE DATE 3 must be postponed. We also revise the Scheduling
`Order in each proceeding to change DUE DATES 5 through 7. DUE
`DATES 3 and 5 through 7 are revised according to the attached Second
`Revised Due Date Appendix. DUE DATES 2, 4, and 8 remain unchanged.
`The parties are still permitted to stipulate to different dates for DUE
`DATES 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. A notice of the stipulation,
`
`
`
`2
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`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
`
`
`
`
`
`
`3
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`SECOND REVISED DUE DATE APPENDIX
`
`DUE DATE 2 ........................................................................... March 1, 2022
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ........................................................................... April 11, 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 ........................................................................... April 12, 2022
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ........................................................................... April 25, 2022
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE 6 .............................................................................. May 3, 2022
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 .............................................................................. May 9, 2022
`Reply to opposition to motion to exclude
`DUE DATE 8 ............................................................................ May 12, 2022
`Oral argument (if requested)
`
`
`
`2 If Patent Owner files neither a reply to Petitioner’s opposition to the
`motion to amend nor a revised motion to amend, the parties are directed to
`Section B(3) in the Scheduling Orders issued with the Decisions on
`Institution.
`
`4
`
`
`
`
`
`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
`
`PATENT OWNER:
`
`Jay Kesan
`jay@jaykesan.com
`
`Alfonso Chan
`achan@shorechan.com
`
`
`
`
`
`5
`
`
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