Trials@uspto.gov
`571-272-7822
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`
`
`
`
`
`Paper 11
`Date: June 12, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ZENTIAN LIMITED,
`Patent Owner.
`
`
`IPR2023-00035
`Patent 10,062,377
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, JEFFREY S. SMITH, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 11
`Date: June 12, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`ZENTIAN LIMITED,
`Patent Owner.
`
`
`IPR2023-00035
`Patent 10,062,377
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, JEFFREY S. SMITH, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2023-00035
`Patent 10,062,377 B2
`
`
`I. GENERAL INSTRUCTIONS
`
`A.
`
`INITIAL AND ADDITIONAL CONFERENCE CALLS
`
`The parties must contact the Board within a month of this Order if
`there is a need to discuss proposed changes to this Scheduling Order or pro-
`posed motions that have not been authorized in this Order or other prior Or-
`der or Notice. See Consolidated Trial Practice Guide (“Consolidated Prac-
`tice Guide”) at 9–10, 65 (Nov. 2019), https://go.usa.gov/xpvPF (guidance in
`preparing for a conference call); see also 84 Fed. Reg. 64,280 (Nov. 21,
`2019). A request for an initial conference call must include a list of pro-
`posed 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 op-
`posed, either certify that the parties have met and conferred telephonically or
`in person to attempt to reach agreement, or explain why such meet and con-
`fer did not occur. The email may not contain substantive argument and, un-
`less otherwise authorized, may not include attachments. See Consolidated
`Practice Guide at 9–10.
`
`B.
`
`PROTECTIVE ORDER
`
`No protective order will apply to this proceeding until the Board en-
`ters one. If either party files a motion to seal before entry of a protective or-
`der, the parties must jointly file a proposed protective order as an exhibit
`
`
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`2
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`IPR2023-00035
`Patent 10,062,377 B2
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`with the motion. It is the responsibility of the party whose confidential in-
`formation is at issue, not necessarily the proffering party, to file the motion
`to seal. 1 The Board encourages the parties to adopt the Board’s default pro-
`tective order if they conclude that a protective order is necessary. See Con-
`solidated 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 pro-
`posed 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 pro-
`ceedings. 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 sub-
`ject 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 com-
`plete and understandable file history. See Consolidated Practice Guide at
`21–22.
`
`
`
` 1
`
` 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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`IPR2023-00035
`Patent 10,062,377 B2
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`
`C. 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 be-
`fore contacting the Board. If attempts to resolve the dispute fail, a party may
`request a conference call with the Board and the other party to seek authori-
`zation to move for relief.
`
`D.
`
`TESTIMONY
`
`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, the Board may levy
`any party’s reasonable expenses and attorneys’ fees on a person who im-
`pedes, delays, or frustrates the fair examination of a witness.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party must file the full transcript of the deposi-
`tion rather than excerpts of only those portions being cited. After a deposi-
`tion transcript has been submitted as an exhibit, all parties who subsequently
`cite to portions of the transcript must cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
`
`E.
`
`CROSS-EXAMINATION
`
`Except as the parties might otherwise agree, the following apply for
`each due date:
`
`
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`4
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`IPR2023-00035
`Patent 10,062,377 B2
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`(a) Cross-examination ordinarily takes place after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(2).
`(b) Cross-examination ordinarily ends no later than a week before the
`filing date for any paper in which the cross-examination testimony may be
`used. Id.
`
`F. 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 be-
`fore 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. 9,497 (Mar. 15, 2019) (“MTA Pilot Program Notice”); see also
`Consolidated Practice Guide at 67. If Patent Owner elects to request the
`Board’s preliminary guidance 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 must gen-
`erally follow the practices and procedures described in the MTA Pilot Pro-
`gram Notice unless otherwise ordered by the Board in this proceeding. See
`also Board’s Guidance on Motions to Amend, https://go.usa.gov/xU6YV;
`Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Lectrosonics,
`
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`5
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`IPR2023-00035
`Patent 10,062,377 B2
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`Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 and IPR2018-01130, Paper
`14 (PTAB Feb. 25, 2019) (precedential); L&P Property Mgmt. v. Remarco
`Machinery & Tech., IPR2019-00255, Paper 15 (PTAB June 18, 2019).
`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 re-
`quest to receive preliminary guidance on its motion to amend. A revised
`motion to amend must provide amendments, arguments, or evidence in a
`manner that is responsive to issues raised in the preliminary guidance or Pe-
`titioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board will enter
`a revised scheduling order setting the briefing schedule for that revised mo-
`tion and adjusting other due dates as needed. See MTA Pilot Program No-
`tice at 9501, App. 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board is-
`sues 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 prelimi-
`nary 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.
`
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`6
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`IPR2023-00035
`Patent 10,062,377 B2
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`G. 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 USPTO
`headquarters in Alexandria or the San Jose, California, USPTO Regional Of-
`fice. The parties may also request that the oral argument instead be held vir-
`tually by videoconference. For the parties’ information in making this deci-
`sion, two judges will appear in person from the San Jose, California, USPTO
`Regional Office and one judge will appear in person from the USPTO head-
`quarters in Alexandria. The parties should state in the request for oral argu-
`ment, DUE DATE 4, (1) whether the parties would prefer either a video
`hearing or an in-person hearing and (2) for in-person hearings, which of the
`location(s) named above the parties would prefer. 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
`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
`
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`IPR2023-00035
`Patent 10,062,377 B2
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`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, includ-
`ing PTAB. Parties are encouraged to participate in the Board’s LEAP pro-
`gram. 2 The Board will grant up to fifteen (15) minutes of additional argu-
`ment 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
`five (5) business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov.3
`All practitioners appearing before the Board must demonstrate the
`highest professional standards. The Board expects all practitioners 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. In the Board’s ex-
`perience, LEAP practitioners often have the best understanding of the facts
`
`
` 2
`
` Information about the LEAP program can be found at www.uspto.gov/leap.
`3 Additionally, the LEAP practitioner must submit a LEAP Verification Form
`confirming eligibility for the program. A combined LEAP Practitioner
`Request for Oral Hearing Participation and Verification Form is available at
`www.uspto.gov/leap.
`
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`IPR2023-00035
`Patent 10,062,377 B2
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`of the case and the evidence of record, and the Board encourages their par-
`ticipation.
`
`II. DUE DATES
`
`This Order sets due dates for the parties to act 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-re-
`ply) 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 stipu-
`late 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 should be aware 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. The parties must promptly file a notice of the stipulation, spe-
`cifically identifying the changed due dates. 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-ex-
`amination testimony.
`
`
`
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`9
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`IPR2023-00035
`Patent 10,062,377 B2
`
`
`A. 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. Importantly, 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).
`
`B. DUE DATE 2
`
`Petitioner may file a reply to Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
`C. 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 or the preliminary
`guidance (if provided) or both; 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 pre-
`liminary 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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`IPR2023-00035
`Patent 10,062,377 B2
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`D. DUE DATE 4
`
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`
`E. DUE DATE 5
`
`Petitioner may file a sur-reply to Patent Owner’s reply to the opposi-
`tion to the motion to amend.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`
`F. 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.
`
`G. DUE DATE 7
`
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`H. DUE DATE 8
`
`The oral argument (if requested by either party) will 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.
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`11
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`IPR2023-00035
`Patent 10,062,377 B2
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`
`DUE DATE APPENDIX
`DUE DATE 1 .............................................................September 5, 2023
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ........................................................... November 28, 2023
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ................................................................. January 9, 2024
`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)4
`DUE DATE 4 ............................................................... January 30, 2024
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ............................................................. February 20, 2024
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE 6 ............................................................. February 27, 2024
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 .................................................................. March 5, 2024
`Reply to opposition to motion to exclude
`DUE DATE 8 ................................................................. March 12, 2024
`Oral argument (if requested)
`
`
`
`
` 4
`
` 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.
`
`12
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`IPR2023-00035
`Patent 10,062,377 B2
`
`For PETITIONER:
`Jennifer C. Bailey
`Adam P. Seitz
`Kevin Rongish
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`kevin.rongish@eriseip.com
`
`
`For PATENT OWNER:
`Peter C. Knops
`Kayvan B. Noroozi
`NOROOZI PC
`peter@noroozipc.com
`kayvan@noroozipc.com
`
`Katherine Rhoades
`Nevin Gewertz
`BARTLITBECK L.L.P.
`katherine.rhoades@bartlitbeck.com
`nevin.gewertz@bartlitbeck.com
`
`
`
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`13
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`
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