Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Date: September 9, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00338
`Patent 8,995,357 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Date: September 9, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00338
`Patent 8,995,357 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`IPR2022-00338
`Patent 8,995,357 B2
`
`
`A. GENERAL INSTRUCTIONS
`
`1.
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`INITIAL AND ADDITIONAL CONFERENCE CALLS
`
`The parties are directed to contact the Board within one 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.
`
`The parties may request additional conference calls as needed. Any
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`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
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`available, (d) state whether the opposing party opposes any relief requested,
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`and (e) if opposed, either (i) certify that the parties have conferred
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`telephonically or in person to attempt to reach agreement or (ii) explain why
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`such a conference 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.
`
`2.
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`PROTECTIVE ORDER
`
`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
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`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
`
`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`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
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`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
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`Protective Order). If the parties choose to propose a protective order
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`deviating from the default protective order, they must submit the proposed
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`protective order jointly along with a marked-up comparison of the proposed
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`and default protective orders showing the differences between the two and
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`explain why good cause exists to deviate from the default protective order.
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`The public has a strong interest in the public availability of trial
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`proceedings. Redactions to documents filed in this proceeding must be
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`limited to the minimum amount necessary to protect confidential
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`information, and the thrust of the underlying argument or evidence must be
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`clearly discernible from the redacted versions. We also advise the parties
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`that information subject to a protective order may become public if
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`identified in a final written decision in this proceeding, and that a motion to
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`expunge the information will not necessarily prevail over the public interest
`
`in maintaining a complete and understandable file history. See Consolidated
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`Practice Guide at 21–22.
`
`3.
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`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
`
`
`2 If the entity whose confidential information is at issue is not a party to the
`proceeding, the parties should contact the Board to arrange a conference call.
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`3
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`
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`IPR2022-00338
`Patent 8,995,357 B2
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`before contacting the Board. If attempts to resolve the dispute fail, a party
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`may request a conference call with the Board.
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`4.
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`TESTIMONY
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`The parties are reminded that the Testimony Guidelines appended to
`
`the Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines)
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`apply to this proceeding. The Board may impose an appropriate sanction for
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`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.
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`5.
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`CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date:
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`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.
`
`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 before 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
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`4
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`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`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 shall
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`generally follow the practices and procedures described in MTA Pilot
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`Program Notice unless otherwise ordered by the Board in this proceeding.
`
`The parties are further directed to Lectrosonics, Inc. v. Zaxcom, Inc.,
`
`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential), and Rules
`
`of Practice to Allocate the Burden of Persuasion on Motions to Amend in
`
`Trial Proceedings Before the Patent Trial and Appeal Board, 85 Fed.
`
`Reg. 82,923 (Dec. 21, 2020).
`
`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 9,500–01. 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 9,501, App. 1B.
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`5
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`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`
`As also discussed in the MTA Pilot Program Notice, if the Board
`
`provides 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
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`reply may only respond to the preliminary guidance. Patent Owner may file
`
`a sur-reply in response to Petitioner’s reply to the preliminary guidance. The
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`sur-reply may only respond to arguments made in the reply and must be filed
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`no later than three (3) weeks after Petitioner’s reply. See MTA Pilot
`
`Program Notice at 9,502. No new evidence may accompany the reply or the
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`sur-reply in this situation.
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`7.
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`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.
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`Unless the Board notifies the parties otherwise, oral argument, if
`
`requested, will be held at the USPTO headquarters in Alexandria, Virginia.
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`The parties may also request that the oral argument instead be held virtually
`
`by videoconference. For the parties’ information in making this decision,
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`even if the parties elect an in-person hearing, one judge will appear remotely
`
`by video and two judges will appear in person from the USPTO
`
`headquarters. The parties should meet and confer, and provide each party’s
`
`preference at the initial conference call, if requested. Alternatively, the
`
`parties may jointly file a paper stating each party’s preference for a hearing
`
`in a particular location or for a virtual hearing within one month of this
`
`6
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`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`Order. Note that the Board may not be able to honor the parties’ preferences
`
`due to, among other things, the availability of hearing room resources, the
`
`needs of the panel, and USPTO policy at the time of the hearing. The Board
`
`will consider the parties’ request and notify the parties of how and where the
`
`hearing will be conducted.
`
`For in-person hearings, 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.
`
`The Board has established the “Legal Experience and Advancement
`
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`
`their skills and to aid in succession planning for the next generation. The
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`Board defines a LEAP practitioner as a patent agent or attorney having
`
`three (3) or fewer substantive oral arguments in any federal tribunal,
`
`including PTAB. Parties are encouraged to participate in the Board’s LEAP
`
`program.3 The Board will grant up to fifteen (15) minutes of additional
`
`argument time to that party, depending on the length of the proceeding and
`
`the PTAB’s hearing schedule. A party should submit a request, no later than
`
`at least five (5) business days before the oral argument, by email to the
`
`Board at PTABHearings@uspto.gov.4
`
`
`3 Information about the LEAP program can be found at www.uspto.gov/leap.
`4 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`
`7
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`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`
`All practitioners appearing before the Board shall demonstrate the
`
`highest professional standards. All practitioners are expected to have a
`
`command of the factual record, the applicable law, and Board procedures, as
`
`well as the authority to commit the party they represent. The Board discerns
`
`that it is often LEAP practitioners who have the best understanding of the
`
`facts of the case and the evidence of record, and the Board encourages their
`
`participation.
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`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
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`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 this
`
`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, specifically
`
`
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available at www.uspto.gov/leap.
`
`8
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`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`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 dates, 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 (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`
`examination (37 C.F.R. § 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
`
`patentability arguments not raised in the response may be deemed waived;
`
`and
`
`b. a motion to amend the patent (37 C.F.R. § 42.121).
`
`2. DUE DATE 2
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`Petitioner may file a reply to Patent Owner’s response.
`
`Petitioner may file an opposition to the motion to amend.
`
`3. DUE DATE 3
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`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 preliminary
`
`guidance (if provided by the Board); 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 provided
`
`9
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`
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`IPR2022-00338
`Patent 8,995,357 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.
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`4. DUE DATE 4
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`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 prehearing conference.
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`7. DUE DATE 7
`
`Either party may file a reply to an opposition to a motion to exclude
`
`evidence.
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`8. DUE DATE 8
`
`Oral argument (if requested by either party) shall be held on this date.
`
`Approximately one month before the hearing, the Board will issue an order
`
`setting the start time of the hearing and the procedures that will govern the
`
`parties’ arguments.
`
`10
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`
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`IPR2022-00338
`Patent 8,995,357 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ...................................................................... December 5, 2022
`
`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ...................................................................... February 27, 2023
`
`Petitioner’s reply to Patent Owner’s response to the petition
`
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ............................................................................ April 10, 2023
`
`Patent Owner’s sur-reply to Petitioner’s reply to the response
`to the petition
`
`Patent Owner’s reply to Petitioner’s opposition to the motion
`to amend OR Patent Owner’s revised motion to amend
`
`DUE DATE 4 ............................................................................... May 1, 2023
`
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ............................................................................. May 22, 2023
`
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition
`to the motion to amend
`
`Motion to exclude evidence
`
`DUE DATE 6 ............................................................................. May 30, 2023
`
`Opposition to motion to exclude
`
`Request for prehearing conference
`
`DUE DATE 7 ............................................................................... June 6, 2023
`
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ............................................................................. June 13, 2023
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`Oral argument (if requested)
`
`
`
`
`
`11
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`
`
`IPR2022-00338
`Patent 8,995,357 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Andrew. B. Patrick
`Kim Leung
`FISH & RICHARDSON P.C.
`IPR50095-0060IP1@fr.com
`PTABInbound@fr.com
`renner@fr.com
`rozylowicz@fr.com
`patrick@fr.com
`leung@fr.com
`
`
`PATENT OWNER:
`
`Brian W. Oaks
`Chad C. Walters
`BAKER BOTTS L.L.P.
`brian.oaks@bakerbotts.com
`chad.walters@bakerbotts.com
`
`
`
`12
`
`
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