Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: June 16, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`SPACETIME3D, INC.,
`Patent Owner.
`
`IPR2023-00242
`Patent 8,881,048 B2
`
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN, DAVID C. McKONE, and
`MINN CHUNG, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`571-272-7822
`
`Paper 12
`Date: June 16, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`SPACETIME3D, INC.,
`Patent Owner.
`
`IPR2023-00242
`Patent 8,881,048 B2
`
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN, DAVID C. McKONE, and
`MINN CHUNG, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`A. GENERAL INSTRUCTIONS
`Initial and Additional Conference Calls
`1.
`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 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
`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 at 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
`
`
`
`IPR2023-00242
`Patent 8,881,048 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 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
`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.
`Discovery Disputes
`3.
`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
`
`
`
`IPR2023-00242
`Patent 8,881,048 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 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.
`
`Cross-Examination
`5.
`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
`
`
`
`IPR2023-00242
`Patent 8,881,048 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 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 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
`
`
`
`IPR2023-00242
`Patent 8,881,048 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
`Detroit, Michigan, USPTO Regional Office, or the San Jose, California,
`USPTO Regional Office. The parties may also request that the oral
`argument instead be held virtually by video. For the parties’ information in
`making this decision, one judge will appear in-person from the USPTO
`headquarters in Alexandria, one judge will appear in-person from the
`Detroit, Michigan, USPTO Regional Office, and one judge will appear in-
`person from the San Jose, California, USPTO Regional Office. The parties
`should state in the request for oral argument, DUE DATE 4, (1) whether the
`
`6
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`parties would prefer either a video hearing or an in-person hearing and (2)
`for in-person hearings, which of the locations 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
`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
`
`7
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`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 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
`
`
`the LEAP program
`3
`Information
`about
`https://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
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available at https://www.uspto.gov/leap.
`
`at
`
`can be
`
`found
`
`8
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`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,
`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.
`
`DUE DATE 1
`
`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).
`DUE DATE 2
`2.
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
`
`
`9
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`
`DUE DATE 3
`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
`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.
`DUE DATE 4
`4.
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`
`DUE DATE 5
`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)).
`
`DUE DATE 6
`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.
`DUE DATE 7
`7.
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`10
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`
`DUE DATE 8
`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. If parties decide to file demonstratives and/or
`objections, filing them a few days before the hearing would be helpful.
`
`11
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................... September 8, 2023
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ........................................................... December 1, 2023
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ............................................................. January 12, 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)5
`DUE DATE 4 ............................................................. February 2, 2024
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ........................................................... February 23, 2024
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE 6 ................................................................. March 1, 2024
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 ................................................................. March 8, 2024
`Reply to opposition to motion to exclude
`DUE DATE 8 ............................................................... March 18, 2024
`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.
`
`12
`
`
`
`IPR2023-00242
`Patent 8,881,048 B2
`FOR PETITIONER:
`
`W. Karl Renner
`Axf-ptab@fr.com
`
`Andrew Patrick
`patrick@fr.com
`
`Kenneth Darby
`kdarby@fr.com
`
`Usman Khan
`khan@fr.com
`
`
`
`FOR PATENT OWNER:
`
`Todd Fitzsimmons
`todd@fitziplaw.com
`
`Gregory Cordrey
`gxc@jmbm.com
`
`
`13
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
