Trials@uspto.gov
`571-272-7822
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`Paper 8
`Date: November 13, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`
`LIONRA TECHNOLOGIES LIMITED,
`Patent Owner.
`
`IPR2023-00796
`Patent 7,260,141 B2
`
`Before PATRICK R. SCANLON, NATHAN A. ENGELS, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`SCHEDULING ORDER
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`571-272-7822
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`Paper 8
`Date: November 13, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`
`LIONRA TECHNOLOGIES LIMITED,
`Patent Owner.
`
`IPR2023-00796
`Patent 7,260,141 B2
`
`Before PATRICK R. SCANLON, NATHAN A. ENGELS, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
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`IPR2023-00796
`Patent 7,260,141 B2
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`
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`
` 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
`proposed motions that have not been authorized in this Order or other prior
`Order or Notice. See Consolidated Trial Practice Guide (“Consolidated
`Practice 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
`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.
`
`B.
`
`PROTECTIVE ORDER
`
`No protective order will apply to this proceeding until the Board
`enters one. If either party files a motion to seal before entry of a protective
`order, the parties must jointly file a proposed protective order as an exhibit
`
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`2
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`IPR2023-00796
`Patent 7,260,141 B2
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`with the 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.1 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.
`
`
`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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`IPR2023-00796
`Patent 7,260,141 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
`before 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
`authorization 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
`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 must 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 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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`IPR2023-00796
`Patent 7,260,141 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
`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
`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
`generally follow the practices and procedures described in the MTA Pilot
`Program 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
`
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`5
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`IPR2023-00796
`Patent 7,260,141 B2
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`(Fed. Cir. 2017); Lectrosonics, 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 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, or evidence in a
`manner that is responsive to issues raised in the preliminary guidance 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.
`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
`
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`6
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`IPR2023-00796
`Patent 7,260,141 B2
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`MTA Pilot Program Notice at 9,502. No new evidence may accompany the
`reply or the sur-reply in this situation.
`
`
`
`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 Dallas,
`Texas, USPTO Regional Office. 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 would appear remotely by
`video, and one judge would appear in person from the Dallas, Texas,
`USPTO Regional Office. 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 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.
`
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`7
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`IPR2023-00796
`Patent 7,260,141 B2
`
`
`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.2 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
`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
`
`
`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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`IPR2023-00796
`Patent 7,260,141 B2
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`well as the authority to commit the party they represent. In the Board’s
`experience, LEAP practitioners often have the best understanding of the
`facts of the case and the evidence of record, and the Board encourages their
`participation.
`
`
`
` 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-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 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,
`specifically 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
`
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`9
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`IPR2023-00796
`Patent 7,260,141 B2
`
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`
`
`
`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
`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.
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`IPR2023-00796
`Patent 7,260,141 B2
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`D. DUE DATE 4
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`
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`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
`opposition 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
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`Either party may file a reply to an opposition to a motion to exclude
`evidence.
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`H. DUE DATE 8
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`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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`IPR2023-00796
`Patent 7,260,141 B2
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`DUE DATE APPENDIX
`
`
`
`DUE DATE 1 ........................................................................ February 5, 2024
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ............................................................................ April 29, 2024
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ............................................................................. June 10, 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 ................................................................................ July 1, 2024
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ............................................................................... July 22, 2024
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE 6 ............................................................................... July 29, 2024
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 ............................................................................ August 5, 2024
`Reply to opposition to motion to exclude
`DUE DATE 8 .......................................................................... August 13, 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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`IPR2023-00796
`Patent 7,260,141 B2
`
`FOR PETITIONER:
`
`Paul R. Hart
`Adam P. Seitz
`Erise IP, P.A.
`paul.hart@eriseip.com
`adam.seitz@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Brett Cooper
`BC Law Group, P.C.
`bcooper@bc-lawgroup.com
`
`Robert A. Auchter
`Auchter PLLC
`robert@auchterlaw.com
`
`
`
`
`13
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