Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Date: November 7, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00758
`Patent 8,478,245 B2
`____________
`
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`Date: November 7, 2023
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00758
`Patent 8,478,245 B2
`____________
`
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2023-00758
`Patent 8,478,245 B2
`
`
`A. GENERAL INSTRUCTIONS
`INITIAL AND ADDITIONAL CONFERENCE CALLS
`1.
`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 (“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 must: (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 (i) certify that the parties have conferred telephonically or in
`person to attempt to reach agreement or (ii) explain why such a conference
`did not occur. The email must not contain substantive argument and, unless
`otherwise authorized, must not include attachments. See Consolidated
`Practice Guide at 9–10.
`
`PROTECTIVE ORDER
`2.
`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
`
`
`
`IPR2023-00758
`Patent 8,478,245 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 public has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in this proceeding must 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 the dispute before
`
`
`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.
`3
`
`
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`IPR2023-00758
`Patent 8,478,245 B2
`
`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 (2023).
`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 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
`
`4
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`
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`IPR2023-00758
`Patent 8,478,245 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
`generally follow the practices and procedures described in the 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. 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 will 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.
`
`5
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`IPR2023-00758
`Patent 8,478,245 B2
`
`
`As 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
`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
`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 9,502. No new evidence may accompany the reply or the
`sur-reply in this situation.
`ORAL ARGUMENT
`7.
`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.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will 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,
`even if the parties elect an in-person hearing, one judge will appear remotely
`by video and at least one judge will appear in person at the USPTO
`headquarters in Alexandria, Virginia. 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. The Board will conduct an in-person
`hearing only when requested by all parties.
`
`6
`
`
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`IPR2023-00758
`Patent 8,478,245 B2
`
`
`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 Board’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
`
`
`
`IPR2023-00758
`Patent 8,478,245 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.
`
`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 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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`IPR2023-00758
`Patent 8,478,245 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
`Petitioner may file a reply to 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 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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`IPR2023-00758
`Patent 8,478,245 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.
`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 prehearing conference.
`7. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`8. DUE DATE 8
`Oral argument (if requested by either party) will 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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`IPR2023-00758
`Patent 8,478,245 B2
`
`
`DUE DATE APPENDIX
`DUE DATE 1 .............................................................. January 30, 2024
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ................................................................. April 23, 2024
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`DUE DATE 3 .................................................................... June 4, 2024
`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 .................................................................. June 25, 2024
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ................................................................... July 16, 2024
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition
`to the motion to amend
`Motion to exclude evidence
`DUE DATE 6 ................................................................... July 23, 2024
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 ................................................................... July 30, 2024
`Reply to opposition to motion to exclude
`DUE DATE 8 ................................................................ August 6, 2024
`Oral argument (if requested)
`
`
`
`
`11
`
`
`
`IPR2023-00758
`Patent 8,478,245 B2
`
`For PETITIONER:
`
`Aliza George Carrano
`Indranil Mukerji
`J. Christopher Moulder
`WILLKIE FARR & GALLAGHER LLP
`acarrano@willkie.com
`imukerji@willkie.com
`cmoulder@willkie.com
`Netflix-GTS-WFG@willkie.com
`
`
`For PATENT OWNER:
`
`Joshua S. Wyde
`Steven T. Jugle
`ALAVI & ANAIPAKOS PLLC
`jwyde@aatriallaw.com
`sjugle@aatriallaw.com
`IPR2023-00758@aatriallaw.com
`
`
`
`12
`
`
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