Trials@uspto.gov
`571-272-7822
`
`Paper 38
`Entered: February 19, 2020
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ELY HOLDINGS LTD.,
`Petitioner,
`
`v.
`
`WILLIAM F. O’KEEFFE,
`Patent Owner.
`
`
`
`PGR2019-00025
`Patent 9,926,709 B1
`
`__________________________
`
`
`
`
`Before HUBERT C. LORIN, MICHAEL W. KIM, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`REVISED SCHEDULING ORDER
`
`
`571-272-7822
`
`Paper 38
`Entered: February 19, 2020
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ELY HOLDINGS LTD.,
`Petitioner,
`
`v.
`
`WILLIAM F. O’KEEFFE,
`Patent Owner.
`
`
`
`PGR2019-00025
`Patent 9,926,709 B1
`
`__________________________
`
`
`
`
`Before HUBERT C. LORIN, MICHAEL W. KIM, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`REVISED SCHEDULING ORDER
`
`
`
`PGR2019-00025
`Patent 9,926,709 B1
`
`A. REVISED MOTION TO AMEND
`
`1.
`
`Introduction
`
`
`
`On February 13, 2020, Patent Owner filed a revised motion to amend
`
`(“revised MTA”) in accordance with our Scheduling Order (Paper 37) and
`
`the March 15, 2019 Federal Register notice regarding a new pilot program
`
`relating to motion to amend practice at the Office. 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. 9497 (Mar. 15, 2019) (“MTA Pilot”). In
`
`accordance with the MTA Pilot, we revise our original July 23, 2019
`
`Scheduling Order to set subsequent due dates based on the date Patent
`
`Owner filed its revised MTA. See MTA Pilot, Appendix 1B (Revised MTA
`
`Timeline).
`
`In particular, this Revised Scheduling Order adds DUE DATES
`
`RMTA1 and RMTA2 and modifies and supercedes DUE DATE 4 and
`
`subsequent due dates as presented in our original Scheduling Order. Further,
`
`this Revised Scheduling Order supplements the instructions provided in our
`
`original Scheduling Order, including those discussing the content of the
`
`briefing related to the revised MTA. To the extent that our original
`
`Scheduling Order provides instructions that are not addressed in this Revised
`
`Scheduling Order, the original instructions remain in effect.
`
`2.
`
`Evidence and Depositions
`
`Generally speaking, new evidence (including declarations) may be
`
`submitted with every paper related to the revised MTA, except sur-replies.
`
`Specifically, both Petitioner’s opposition to the revised MTA and Patent
`
`Owner’s reply to that opposition may be accompanied by new evidence that
`
`2
`
`
`
`PGR2019-00025
`Patent 9,926,709 B1
`
`responds to issues raised in the preliminary guidance (if provided) or in the
`
`
`
`corresponding revised MTA or opposition. Petitioner’s sur-reply may not be
`
`accompanied by new evidence other than deposition transcripts of the cross-
`
`examination of any reply witness.
`
`Once likely declarants are known, the parties should confer as to dates
`
`for scheduling all depositions related to the revised MTA after the relevant
`
`papers will be filed. The Board expects parties to make their declarants
`
`available for such depositions promptly, and to make their attorneys
`
`available to take and defend such depositions; any unavailability will not be
`
`a reason to adjust the schedule for briefing on a revised MTA absent
`
`extraordinary circumstances.
`
`If Petitioner submits a declaration with its opposition to the revised
`
`MTA, or Patent Owner submits a declaration with its reply to that
`
`opposition, the party should typically make such declarant available for
`
`deposition within 1 week after filing that declaration. As needed, the parties
`
`may wish to agree to shortened periods for making objections and serving
`
`supplemental evidence prior to a deposition. See 37 C.F.R. §§ 42.53(d)(2),
`
`42.64(a) and (b). In the absence of such an agreement, the parties shall
`
`schedule such depositions in advance of a due date for serving supplemental
`
`evidence. If, after receving supplemental evidence, a party believes in good
`
`faith that the supplemental evidence requires further cross-examination of a
`
`declarant, the party should contact the Board for a conference call. Again, it
`
`is incumbent upon the parties to work cooperatively to schedule depositions
`
`of their declarants. Thus, the Board strongly encourages the parties to meet
`
`and confer as soon as practicable (including before anticipated declarations
`
`are submitted, if possible) to coordinate schedules.
`
`3
`
`
`
`PGR2019-00025
`Patent 9,926,709 B1
`
`
`
`
`Because Patent Owner’s reply and Petitioner’s sur-reply as to the
`
`revised MTA are due near or after motions to exclude are due, the parties
`
`might not have an opportunity to object to evidence submitted with the reply
`
`or sur-reply and file a motion to exclude such evidence before the oral
`
`hearing. See 37 C.F.R. § 42.64. Thus, if needed, a party may seek
`
`authorization to file a motion to exclude reply or surreply evidence after the
`
`oral hearing or may make an oral motion to exclude and argue such a motion
`
`at the oral hearing.
`
`
`
`B. DUE DATES
`
`This Order sets due dates for the parties to take action by DUE DATE
`
`RMTA1 and after. The parties may stipulate different dates for DUE
`
`DATES RMTA1, RMTA2, 5, and 6 (earlier or later, but no later than DUE
`
`DATE 7). 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 RMTA1
`
`Petitioner may file an opposition to Patent Owner’s revised MTA.
`
`Petitioner’s opposition to the revised MTA may only respond to issues
`
`raised in the revised MTA or the preliminary guidance (if provided).
`
`4
`
`
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`PGR2019-00025
`Patent 9,926,709 B1
`
`2. DUE DATE 4
`
`
`
`Either party may file a request for oral argument (may not be extended
`
`by stipulation).
`
`3. DUE DATE RMTA2
`
`Patent Owner may file a reply to Petitioner’s opposition to the revised
`
`MTA. Patent Owner’s rely to the opposition may only respond to issues
`
`raised in the opposition.
`
`4. DUE DATE 5
`
`Either party may file a motion to exclude evidence (37 C.F.R.
`
`§ 42.64(c)).
`
`5. 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.
`
`6. DUE DATE 7
`
`Either party may file a reply to an opposition to a motion to exclude
`
`evidence.
`
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`
`opposition to the revised MTA. Petitioner’s sur-reply may only respond to
`
`issues raised in the reply to the opposition.
`
`7. DUE DATE 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.
`
`
`
`
`
`5
`
`
`
`
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`PGR2019-00025
`Patent 9,926,709 B1
`
`
`REVISED DUE DATE APPENDIX
`
`
`
`DUE DATE RMTA1 ............................................................. March 26, 2020
`
`Petitioner’s opposition to Patent Owner’s revised motion to amend
`
`DUE DATE 4 .............................................................................. April 2, 2020
`
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE RMTA2 ............................................................... April 16, 2020
`
`Patent Owner’s reply to opposition to revised motion to amend
`
`DUE DATE 5 ........................................................................... April 23, 2020
`
`Motion to exclude evidence
`
`DUE DATE 6 ........................................................................... April 30, 2020
`
`Opposition to motion to exclude
`
`Request for prehearing conference
`
`DUE DATE 7 .............................................................................. May 7, 2020
`
`Reply to opposition to motion to exclude
`
`Petitioner’s sur-reply to reply to opposition to revised motion to
`amend
`
`DUE DATE 8 ............................................................................ May 14, 2020
`
`Oral argument (if requested)
`
`
`
`6
`
`
`
`
`
`PGR2019-00025
`Patent 9,926,709 B1
`
`FOR PETITIONER:
`
`Elizabeth Shuster
`eshuster@taftlaw.com
`
`Ryan White
`rwhite@taftlaw.com
`
`Donald McPhail
`dmcphail@taftlaw.com
`
`
`FOR PATENT OWNER:
`
`Theodore Bielen, Jr.
`bielenlt@yahoo.com
`
`
`
`7
`
`
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