Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: November 15, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, LYNNE E. PETTIGREW, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: November 15, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, LYNNE E. PETTIGREW, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`A. GENERAL INSTRUCTIONS
`
`1.
`
`Initial and Additional Conference Calls
`
`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 Patent Trial and Appeal Board Consolidated Trial
`
`Practice Guide (November 2019) (“Consolidated Practice Guide”)1 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
`
`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 9–10.
`
`2.
`
`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
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`2
`
`
`
`IPR2022-00976
`Patent 9,892,386 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
`
`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 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 21–22.
`
`3.
`
`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, please contact the Board.
`
`3
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`before contacting the Board. If attempts to resolve the dispute fail, a party
`
`may request a conference call with the Board.
`
`4.
`
`Testimony
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Consolidated Practice Guide 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.
`
`5.
`
`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).
`
`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 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
`
`4
`
`
`
`IPR2022-00976
`Patent 9,892,386 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. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”); see also
`
`Consolidated Practice Guide 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 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. 82923 (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 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.
`
`5
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`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.
`
`7.
`
`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.
`
`The parties may request that the oral argument be held at the U.S.
`
`Patent and Trademark Office (“USPTO”) headquarters in Alexandria. The
`
`parties may also request that the oral argument instead be held virtually by
`
`videoconference. For the parties’ information in making this decision, two
`
`judges will appear remotely by video and one judge will appear in-person
`
`from the USPTO headquarters in Alexandria. The parties should state in the
`
`request for oral argument, DUE DATE 4, whether the parties would prefer
`
`either a video hearing or an in-person hearing. To the extent the parties
`
`disagree, they should meet and confer; if the dispute cannot be resolved by
`
`meeting and conferring, the parties should inform the Board of each party’s
`
`6
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`individual preferences. PTAB will only conduct an in-person hearing when
`
`requested by all parties.
`
`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
`
`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
`
`
`3 Information about the LEAP program can be found at www.uspto.gov/leap.
`
`
`7
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`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`at least five (5) business days before the oral hearing, by email to the Board
`
`at PTABHearings@uspto.gov.4
`
`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.
`
`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
`
`
`4 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available at www.uspto.gov/leap.
`
`8
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`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 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 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.
`
`9
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`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.
`
`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. Roughly 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.
`
`10
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................... February 12, 2023
`
`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... May 8, 2023
`
`Petitioner’s reply to Patent Owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. June 20, 2023
`
`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)5
`
`DUE DATE 4 .................................................................. July 11, 2023
`
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ................................................................ August 1, 2023
`
`Petitioner’s sur-reply to reply to opposition to motion to amend
`
`Motion to exclude evidence
`
`DUE DATE 6 .................................................................August 8, 2023
`
`Opposition to motion to exclude
`
`Request for prehearing conference
`
`DUE DATE 7 .............................................................. August 15, 2023
`
`Reply to opposition to motion to exclude
`
`DUE DATE 8 .............................................................. August 23, 2023
`
`Oral argument (if requested)
`
`
`
`
`5 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.
`
`11
`
`
`
`IPR2022-00976
`Patent 9,892,386 B2
`
`For PETITIONER:
`
`Andrew S. Ehmke
`Jonathan R. Bowser
`Angela Oliver
`Eugene Goryunov
`Michael S. Parsons
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`jon.bowser.ipr@haynesboone.com
`angela.oliver.ipr@haynesboone.com
`eugene.goryunov.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`
`Jonathan K. Waldrop
`John W. Downing
`KASOWITZ BENSON TONES LLP
`jwaldrop@kasowitz.com
`jdowning@kasowitz.com
`
`
`12
`
`
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