Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: August 6, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`
`IPR2021-00453
`Patent 10,517,484 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before, GRACE KARAFFA OBERMANN, BRIAN J. McNAMARA,
`and SHARON FENICK Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: August 6, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`
`IPR2021-00453
`Patent 10,517,484 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before, GRACE KARAFFA OBERMANN, BRIAN J. McNAMARA,
`and SHARON FENICK Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`IPR2021-00453
`Patent 10,517,484 B2
`
`A. GENERAL INSTRUCTIONS
`1.
`Initial Conference Call
`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”)1 at 9–10, 65 (guidance in preparing for a conference call);
`see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). A request for an initial
`conference call shall include a list of proposed motions, if any, to be
`discussed during the call.
`2.
`Standing Procedure for Requests for Conference Calls and
`Email Communications to the Board
`The following procedures apply to all requests for a conference call
`with the Board and all email communications to the Board:
`a. The parties may request a conference call by jointly contacting the
`Board at the email address or telephone number listed above the
`caption of this Order. Requests via email are expected and
`preferred; requests via telephone should be reserved for
`timecritical circumstances.
`b. Prior to requesting a conference call or sending any email
`communication to the Board, the parties must confer in an effort to
`resolve any issue to be presented to the Board.
`c. Any email communication to the Board must be sent on behalf of
`all parties and must copy all counsel.
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2021-00453
`Patent 10,517,484 B2
`
`
`d. Any request for a conference call or other email communication to
`the Board must identify the issue(s) presented, identify the precise
`relief sought by each party, and state whether the other party
`opposes the relief sought.
`e. The email may include a brief discussion of the background that
`led to the issue(s), but must not include arguments.
`f. Any request for a conference call must include a list of dates and
`times when both parties are available for the call.
`Protective Order
`3.
`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. It is the responsibility of the party whose confidential information is
`at issue, not necessarily the proffering party, to file the motion to seal.2 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
`
`
`2 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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`IPR2021-00453
`Patent 10,517,484 B2
`
`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.
`4.
`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
`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.
`5.
`Testimony
`The parties are reminded that 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, 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.
`6.
`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).
`
`4
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`IPR2021-00453
`Patent 10,517,484 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.
`7. 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. 9497 (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 shall
`generally follow the practices and procedures described in 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) (precedential).
`
`5
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`IPR2021-00453
`Patent 10,517,484 B2
`
`
`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, 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 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.
`8.
`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
`
`6
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`
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`IPR2021-00453
`Patent 10,517,484 B2
`
`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 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, 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,
`
`7
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`
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`IPR2021-00453
`Patent 10,517,484 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.
`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.
`b. A motion to amend the patent (37 C.F.R. § 42.121).
`2. DUE DATE 2
`Petitioner may file a reply to the 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/or preliminary
`guidance (if provided); 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
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`
`
`IPR2021-00453
`Patent 10,517,484 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.
`4. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`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 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
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`
`
`IPR2021-00453
`Patent 10,517,484 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ...................................................................... October 29, 2021
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ....................................................................... January 21, 2022
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ........................................................................... March 4, 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)3
`DUE DATE 4 ......................................................................... March 25, 2022
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ........................................................................... April 15, 2022
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE 6 ........................................................................... April 22, 2022
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 ........................................................................... April 29, 2022
`Reply to opposition to motion to exclude
`DUE DATE 8 .............................................................................. May 5, 2022
`Oral argument (if requested)
`
`
`
`3 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.
`
`10
`
`
`
`IPR2021-00453
`Patent 10,517,484 B2
`
`FOR PETITIONER:
`
`Jeffrey Kushan
`Ching-Lee Fukuda
`Thomas Broughan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`clfukuda@sidley.com
`tbroughan@sidley.com
`
`
`
`
`
`FOR PATENT OWNER:
`
`Thomas Lewry
`John LeRoy
`John Halan
`Christopher Smith
`Andrew Turner
`BROOKS KUSHMAN P.C.
`tlewry@brookskushman.com
`jleroy@brookskushman.com
`jhalan@brookskushman.com
`csmith@brookskushman.com
`aturner@brookskushman.com
`
`
`
`
`11
`
`
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