Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Date: December 11, 2024
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC. and
`AMAZON.COM SERVICES LLC,
`Petitioner,
`
`v.
`
`NOKIA TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`IPR2024-00847
`Patent 7,532,808 B2
`____________
`
`
`
`
`Before GREGG I. ANDERSON, STEVEN M. AMUNDSON, and
`JASON M. REPKO, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 12
`Date: December 11, 2024
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC. and
`AMAZON.COM SERVICES LLC,
`Petitioner,
`
`v.
`
`NOKIA TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`IPR2024-00847
`Patent 7,532,808 B2
`____________
`
`
`
`
`Before GREGG I. ANDERSON, STEVEN M. AMUNDSON, and
`JASON M. REPKO, Administrative Patent Judges.
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2024-00847
`Patent 7,532,808 B2
`
`
`GENERAL INSTRUCTIONS
`A.
`INITIAL AND ADDITIONAL CONFERENCE CALLS
`1.
`The parties must 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 PTAB 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 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 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 will 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 must be filed as an exhibit with the
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
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`IPR2024-00847
`Patent 7,532,808 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 107–22 (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 and the public have 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.
`3.
`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 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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`IPR2024-00847
`Patent 7,532,808 B2
`
`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.
`TESTIMONY
`4.
`The Testimony Guidelines appended to the Consolidated Practice
`Guide at 127–30 (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.
`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 the cited portions. After a deposition
`transcript has been submitted as an exhibit, all parties who subsequently cite
`to portions of the transcript must cite to the already submitted exhibit instead
`of submitting another copy of the same transcript. See 37 C.F.R. § 42.6(d)
`(“A document already in the record of the proceeding must not be filed
`again, not even as an exhibit or an appendix, without express Board
`authorization.”).
`
`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 may be
`used. Id.
`
`4
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`IPR2024-00847
`Patent 7,532,808 B2
`
`
`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 a motion to amend. 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.
`Any motion to amend and briefing related to the motion must comply
`with the rules pertaining to motions to amend (37 C.F.R. § 42.121) and the
`practices and procedures described in Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential).
`Patent Owner has the option to receive preliminary guidance from the
`Board concerning a motion to amend. See 37 C.F.R. § 42.121(e). If Patent
`Owner elects to request preliminary guidance from the Board concerning a
`motion to amend, Patent Owner must do so in its motion to amend filed on
`DUE DATE 1. Id. § 42.121(a)(1)(ii).
`At DUE DATE 3, Patent Owner may file a reply to Petitioner’s
`opposition to the motion to amend and/or the Board’s preliminary guidance.
`37 C.F.R. § 42.121(e)(3). In lieu of a reply, Patent Owner has the option to
`file a revised motion to amend that addresses the issues raised in the Board’s
`preliminary guidance or in Petitioner’s opposition to the motion to amend.
`Id. § 42.121(f)(1)–(2). Patent Owner may elect to file a revised motion to
`amend even if Patent Owner did not request to receive preliminary guidance
`concerning its motion to amend. A revised motion to amend must include
`one or more new proposed substitute claims in place of the previously
`
`5
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`IPR2024-00847
`Patent 7,532,808 B2
`
`presented substitute claims, where each new proposed substitute claim
`presents a new claim amendment. Id.
`If Patent Owner files a revised motion to amend, the Board may
`determine whether to request the Chief Administrative Patent Judge to
`extend the final written decision deadline more than one year from the date a
`trial is instituted in accordance with § 42.100(c) and whether to extend any
`remaining deadlines under § 42.5(c)(2). 37 C.F.R. § 42.121(f)(1).
`Typically, the Board will enter a revised scheduling order setting the
`briefing schedule for the revised motion to amend and adjusting other due
`dates as needed.
`At DUE DATE 5, Petitioner may file a sur-reply that is limited to
`responding to the Board’s preliminary guidance and/or arguments made in
`Patent Owner’s reply brief. 37 C.F.R. § 42.121(e)(3). Petitioner’s sur-reply
`may not be accompanied by new evidence, but may comment on any new
`evidence filed with Patent Owner’s reply brief and/or point to cross-
`examination testimony of a reply witness if relevant to arguments made in
`Patent Owner’s reply brief. Id.
`If the Board issues preliminary guidance concerning 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 or at any other DUE DATE that the Board specifies in a
`revised scheduling order. Petitioner’s reply may only respond to the Board’s
`preliminary guidance and may not be accompanied by new evidence.
`37 C.F.R. § 42.121(e)(4). Patent Owner may file a sur-reply in response to
`Petitioner’s reply to the Board’s preliminary guidance. Id. Patent Owner’s
`
`6
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`IPR2024-00847
`Patent 7,532,808 B2
`
`sur-reply may only respond to Petitioner’s reply and may not be
`accompanied by new evidence. Id. Patent Owner’s sur-reply must be filed
`no later than three (3) weeks after Petitioner’s reply or at any other DUE
`DATE that the Board specifies in a revised scheduling order.
`In the event the Board requests examination assistance under
`37 C.F.R. § 42.121(d)(3)(ii), the parties will be notified of the request and
`may adjust the scheduling order as needed.
`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.
`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, it is anticipated that one judge
`will appear remotely by video and two judges 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.
`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
`
`7
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`IPR2024-00847
`Patent 7,532,808 B2
`
`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
`five (5) business days before the oral argument, by email to the Board at
`PTABHearings@uspto.gov.4
`All practitioners appearing before the Board must demonstrate the
`highest professional standards. The Board expects all practitioners to have a
`
`3 Information about the LEAP program can be found at www.uspto.gov/leap.
`4 Additionally, a LEAP Verification Form must 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
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`IPR2024-00847
`Patent 7,532,808 B2
`
`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
`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.
`
`8. MOTION TO EXCLUDE
`A motion to exclude may only raise admissibility matters under the
`Federal Rules of Evidence. Any matter pertaining to an allegation that a
`reply or sur-reply exceeds the proper scope of a reply or sur-reply must not
`be raised in a motion to exclude. Failure to comply may lead to summary
`dismissal of the motion to exclude. If an issue arises pertaining to whether a
`reply or sur-reply exceeds the proper scope of a reply or sur-reply, the party
`raising the issue must initiate a conference call with the Board within one
`week of the filing of the reply or sur-reply, whichever is the case, to discuss
`how to resolve the issue.
`
`DUE DATES
`B.
`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
`
`9
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`IPR2024-00847
`Patent 7,532,808 B2
`
`authorization from the Board. In stipulating to move any due dates in this
`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 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:
`
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`IPR2024-00847
`Patent 7,532,808 B2
`
`
`a. a reply to the opposition to the motion to amend and the
`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
`preliminary guidance, Petitioner may file a reply to Board’s preliminary
`guidance no later than three (3) weeks after DUE DATE 3. Patent Owner
`may file a sur-reply to Petitioner’s reply to Board’s 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
`
`11
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`IPR2024-00847
`Patent 7,532,808 B2
`
`setting the start time of the hearing and the procedures that will govern the
`parties’ arguments.
`
`12
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`IPR2024-00847
`Patent 7,532,808 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ March 6, 2025
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ............................................................................. May 29, 2025
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`DUE DATE 3 .............................................................................. July 10, 2025
`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 .............................................................................. July 31, 2025
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ......................................................................... August 21, 2025
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition
`to the motion to amend
`Motion to exclude evidence
`DUE DATE 6 ......................................................................... August 28, 2025
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 ..................................................................... September 4, 2025
`Reply to opposition to motion to exclude
`DUE DATE 8 ................................................................... September 11, 2025
`Oral argument (if requested)
`
`
`13
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`
`
`IPR2024-00847
`Patent 7,532,808 B2
`
`For PETITIONER:
`
`Jessica C. Kaiser
`Robin L. Brewer
`Jonathan R. Carter
`Steven R. Beigelmacher
`Atanas Baitchev
`PERKINS COIE LLP
`kaiser-ptab@perkinscoie.com
`brewer-ptab@perkinscoie.com
`carter-ptab@perkinscoie.com
`beigelmacher-ptab@perkinscoie.com
`baitchev_ptab@perkinscoie.com
`Amazon-NokiaIPR@perkinscoie.com
`
`
`For PATENT OWNER:
`
`Scott W. Hejny
`R. Mitch Verboncoeur
`McKOOL SMITH P.C.
`shejny@mckoolsmith.com
`mverboncoeur@mckoolsmith.com
`Nokia_IPRs_Amazon_HP@mckoolsmith.com
`
`
`
`14
`
`
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