`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper: 10
`Date: July 10, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)1
`
`____________
`
`
`
`Before MICHAEL R. ZECHER, GEORGE R. HOSKINS, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order is being filed in each proceeding listed in the caption. The
`parties are not authorized to use this style of heading.
`
`
`
`
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`A. GENERAL INSTRUCTIONS
`1. 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 Order or
`proposed motions that have not been authorized in this Order or other prior
`Order or Notice. See Consolidated Trial Practice Guide (Nov. 2019)
`(“Consolidated Practice Guide”)2, 9–10, 65. A request for an initial
`conference call must 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 these proceedings 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
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`2
`
`
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`at issue, not necessarily the proffering party, to file the motion to seal. 3 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, App’x 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 these proceedings 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 these proceedings, 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, 19–22.
`3. Discovery Disputes
`The Board encourages the 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
`
`
`3 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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`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`dispute fail, a party may request a conference call with the Board and the
`other party in order to seek authorization to move for relief.
`4. Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Consolidated Practice Guide, Appendix D, 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.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`rather than excerpts of only those portions being cited. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript shall cite to the first-filed exhibit rather than
`submitting another copy of the same transcript.
`5. Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`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
`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
`
`4
`
`
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`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, 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, 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
`
`5
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`
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`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`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, App’x 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, 9,502. 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 DUE DATE 4 below.
`The parties may request that the oral argument be held at the USPTO
`headquarters in Alexandria, Virginia. The parties may also request that the
`oral argument instead be held virtually by videoconference. For the parties’
`information in making this decision, if oral argument is held in Alexandria,
`
`6
`
`
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`then one judge will appear in-person with the parties, and two judges will
`appear remotely by video. The parties should meet and confer concerning
`these options. The parties should then state in their requests 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 after
`meeting and conferring, the parties should inform the Board of each party’s
`individual preferences. PTAB will conduct an in-person hearing only 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
`
`
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`program. 4 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. 5
`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 to 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
`
`
`4 Information about the LEAP program can be found at www.uspto.gov/leap.
`5 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
`
`
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 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 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
`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.
`
`9
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`
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`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`
`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
`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.
`
`10
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`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`
`8. DUE DATE 8
`The oral argument (if requested by either party) shall be held on this
`
`date.
`
`11
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`
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`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`
`DUE DATE APPENDIX
`DUE DATE 1 .......................................................... September 29, 2023
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................... December 22, 2023
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .............................................................. February 2, 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)6
`DUE DATE 4 ............................................................ February 23, 2024
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ................................................................ March 15, 2024
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 ................................................................ March 22, 2024
`Opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ................................................................ March 29, 2024
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ................................................................. April 10, 2024
`Oral argument (if requested)
`
`
`6 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
`
`
`
`IPR2023-00398 (Patent 10,438,196 B2)
`IPR2023-00399 (Patent 9,208,488 B2)
`
`PETITIONER:
`
`Andrew S. Ehmke
`Eugene Goryunov
`Jonathan R. Bowser
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`eugene.goryunov.ipr@haynesboone.com
`jon.bowser.ipr@haynesboone.com
`jordan.maucotel.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Jonathan K. Waldrop
`John W. Downing
`KASOWITZ BENSON TONES LLP
`jwaldrop@kasowitz.com
`jdowning@kasowitz.com
`
`13
`
`
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