Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 1 of 12 PageID #: 27570
`Case 5:19-cv-00036—RWS Document 511-2 Filed 08/25/20 Page 1 of 12 PageID #: 27570
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`EXHIBIT CC
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`EXHIBIT CC
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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 2 of 12 PageID #: 27571
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`Trials@uspto.gov
`571-272-7822
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`Paper 12
`Entered: June 19, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`
`IPR2020-00199 (Patent 6,329,794 B1)
` IPR2020-00204 (Patent 6,928,306 B2)1
`
`
`
`
`Before MICHAEL R. ZECHER, MINN CHUNG, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.2
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
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`
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`1 This Order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this filing style in subsequent
`papers.
`2 This is not an expanded panel of the Board. It is a listing of all the Judges
`on the panels of the above-listed proceedings.
`
`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 3 of 12 PageID #: 27572
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
`
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`A. GENERAL INSTRUCTIONS
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`1.
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`Initial and Additional Conference Calls
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`The parties are directed to contact the Board within a month of this
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`Order if there is a need to discuss proposed changes to this Scheduling Order
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`or proposed motions that have not been authorized in this Order or other
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`prior Order or Notice. See Consolidated Trial Practice Guide (“Consolidated
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`Practice Guide”)3 at 9–10, 65 (guidance in preparing for a conference call);
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`see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). A request for an initial
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`conference call shall include a list of proposed motions, if any, to be
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`discussed during the call.
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`The parties may request additional conference calls as needed. Any
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`email requesting a conference call with the Board should: (a) copy all
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`parties, (b) indicate generally the relief being requested or the subject matter
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`of the conference call, (c) include multiple times when all parties are
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`available, (d) state whether the opposing party opposes any relief requested,
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`and (e) if opposed, either certify that the parties have met and conferred
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`telephonically or in person to attempt to reach agreement, or explain why
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`such meet and confer did not occur. The email may not contain substantive
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`argument and, unless otherwise authorized, may not include attachments.
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`See Consolidated Practice Guide at 9–10.
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`2.
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`Protective Order
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`No protective order shall apply to this proceeding until the Board
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`enters one. If either party files a motion to seal before entry of a protective
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`order, a jointly proposed protective order shall be filed as an exhibit with the
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`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 4 of 12 PageID #: 27573
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
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`motion. It is the responsibility of the party whose confidential information is
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`at issue, not necessarily the proffering party, to file the motion to seal.4 The
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`Board encourages the parties to adopt the Board’s default protective order if
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`they conclude that a protective order is necessary. See Consolidated Practice
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`Guide at 107–122 (App. B, Protective Order Guidelines and Default
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`Protective Order). If the parties choose to propose a protective order
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`deviating from the default protective order, they must submit the proposed
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`protective order jointly along with a marked-up comparison of the proposed
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`and default protective orders showing the differences between the two and
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`explain why good cause exists to deviate from the default protective order.
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`The Board has a strong interest in the public availability of trial
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`proceedings. Redactions to documents filed in this proceeding should be
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`limited to the minimum amount necessary to protect confidential
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`information, and the thrust of the underlying argument or evidence must be
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`clearly discernible from the redacted versions. We also advise the parties
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`that information subject to a protective order may become public if
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`identified in a final written decision in this proceeding, and that a motion to
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`expunge the information will not necessarily prevail over the public interest
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`in maintaining a complete and understandable file history. See Consolidated
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`Practice Guide at 21–22.
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`3.
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`Discovery Disputes
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`The Board encourages parties to resolve disputes relating to discovery
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`on their own. To the extent that a dispute arises between the parties relating
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`to discovery, the parties must meet and confer to resolve such a dispute
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`4 If the entity whose confidential information is at issue is not a party to the
`proceeding, please contact the Board.
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`3
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 5 of 12 PageID #: 27574
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
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`before contacting the Board. If attempts to resolve the dispute fail, a party
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`may request a conference call with the Board.
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`4.
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`Testimony
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`The parties are reminded that the Testimony Guidelines appended to
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`the Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines)
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`apply to this proceeding. The Board may impose an appropriate sanction for
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`failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
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`example, reasonable expenses and attorneys’ fees incurred by any party may
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`be levied on a person who impedes, delays, or frustrates the fair examination
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`of a witness.
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`5.
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`Cross-Examination
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`Except as the parties might otherwise agree, for each due date:
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`Cross-examination ordinarily takes place after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`Cross-examination ordinarily ends no later than a week before the
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`filing date for any paper in which the cross-examination testimony is
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`expected to be used. Id.
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`6. Motion to Amend
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`Patent Owner may file a motion to amend (“MTA”) without prior
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`authorization from the Board. Nevertheless, Patent Owner must confer with
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`the Board before filing such a motion. 37 C.F.R. § 42.121(a). To satisfy
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`this requirement, Patent Owner should request a conference call with the
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`Board no later than two weeks prior to DUE DATE 1. See Section B below
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`regarding DUE DATES.
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`Patent Owner has the option to receive preliminary guidance from the
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`Board on its motion to amend. See Notice Regarding a New Pilot Program
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`4
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 6 of 12 PageID #: 27575
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
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`Concerning Motion to Amend Practice and Procedures in Trial Proceedings
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`under the America Invents Act before the Patent Trial and Appeal Board, 84
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`Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”); see also
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`Consolidated Practice Guide at 67. If Patent Owner elects to request
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`preliminary guidance from the Board on its motion, it must do so in its
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`motion to amend filed on DUE DATE 1.
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`Any motion to amend and briefing related to such a motion shall
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`generally follow the practices and procedures described in MTA Pilot
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`Program Notice unless otherwise ordered by the Board in this proceeding.
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`The parties are further directed to the Board’s Guidance on Motions to
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`Amend in view of Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
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`2017) (https://go.usa.gov/xU6YV), and Lectrosonics, Inc. v. Zaxcom, Inc.,
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`IPR2018-01129, Paper 15 and IPR2018-01130, Paper 14 (PTAB Feb. 25,
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`2019) (precedential).
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`At DUE DATE 3, Patent Owner has the option to file a reply to the
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`opposition to the motion to amend and preliminary guidance, or a revised
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`motion to amend. See MTA Pilot Program Notice at 9500–01. Patent
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`Owner may elect to file a revised motion to amend even if Patent Owner did
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`not request to receive preliminary guidance on its motion to amend. A
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`revised motion to amend must provide amendments, arguments, and/or
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`evidence in a manner that is responsive to issues raised in the preliminary
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`guidance and/or Petitioner’s opposition.
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`If Patent Owner files a revised motion to amend, the Board shall enter
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`a revised scheduling order setting the briefing schedule for that revised
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`motion and adjusting other due dates as needed. See MTA Pilot Program
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`Notice at 9501, App. 1B.
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`5
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 7 of 12 PageID #: 27576
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
`
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`As also discussed in the MTA Pilot Program Notice, if the Board
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`issues preliminary guidance on the motion to amend, and Patent Owner files
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`neither a reply to the opposition to the motion to amend nor a revised motion
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`to amend at DUE DATE 3, Petitioner may file a reply to the Board’s
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`preliminary guidance, no later than three (3) weeks after DUE DATE 3. The
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`reply may only respond to the preliminary guidance. Patent Owner may file
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`a sur-reply in response to Petitioner’s reply to the Board’s preliminary
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`guidance. The sur-reply may only respond to arguments made in the reply
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`and must be filed no later than three (3) weeks after Petitioner’s reply. See
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`MTA Pilot Program Notice at 9502. No new evidence may accompany the
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`reply or the sur-reply in this situation.
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`7.
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`Oral Argument
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`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
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`To permit the Board sufficient time to schedule the oral argument, the
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`parties may not stipulate to an extension of the request for oral argument
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`beyond the date set forth in the Due Date Appendix.
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`Unless the Board notifies the parties otherwise, oral argument, if
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`requested, will be held at the USPTO headquarters in Alexandria, Virginia.
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`The parties may request that the oral argument instead be held at the San
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`Jose, California, USPTO Regional Office. The parties should meet and
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`confer, and jointly propose the parties’ preference at the initial conference
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`call, if requested. Alternatively, the parties may jointly file a paper stating
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`their preference for the hearing location within one month of this Order.
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`Note that the Board may not be able to honor the parties’ preference of
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`hearing location due to, among other things, the availability of hearing room
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`resources and the needs of the panel. The Board will consider the location
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`6
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 8 of 12 PageID #: 27577
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
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`request and notify the parties accordingly if a request for change in location
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`is granted.
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`Seating in the Board’s hearing rooms may be limited, and will be
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`available on a first-come, first-served basis. If either party anticipates that
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`more than five (5) individuals will attend the argument on its behalf, the
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`party should notify the Board as soon as possible, and no later than the
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`request for oral argument. Parties should note that the earlier a request for
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`accommodation is made, the more likely the Board will be able to
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`accommodate additional individuals.
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`B. DUE DATES
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`This Order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate different dates for DUE
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`DATES 1, 5, and 6, as well as the portion of DUE DATE 2 related to
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`Petitioner’s reply (earlier or later, but no later than DUE DATE 3 for Patent
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`Owner’s sur-reply) and the portion of DUE DATE 3 related to Patent
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`Owner’s sur-reply (earlier or later, but no later than DUE DATE 7). The
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`parties may not stipulate to a different date for the portion of DUE DATE 2
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`related to Petitioner’s opposition to a motion to amend, or for the portion of
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`DUE DATE 3 related to Patent Owner’s reply to an opposition to a motion
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`to amend (or Patent Owner’s revised motion to amend) without prior
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`authorization from the Board. In stipulating to move any due dates in the
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`scheduling order, the parties must be cognizant that the Board requires four
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`weeks after the filing of an opposition to the motion to amend (or the due
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`date for the opposition, if none is filed) for the Board to issue its preliminary
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`guidance, if requested by Patent Owner. A notice of the stipulation,
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`7
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 9 of 12 PageID #: 27578
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
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`specifically identifying the changed due dates, must be promptly filed. The
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`parties may not stipulate an extension of DUE DATES 4, 7, and 8.
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`In stipulating different times, the parties should consider the effect of
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`the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (§ 42.64(b)(2)), to conduct cross-examination
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`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
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`examination testimony.
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`1.
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`DUE DATE 1
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`Patent Owner may file—
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`a. A response to the petition (37 C.F.R. § 42.120). If Patent Owner
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`elects not to file a response, Patent Owner must arrange a conference call
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`with the parties and the Board. Patent Owner is cautioned that any
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`arguments not raised in the response may be deemed waived.
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`b. A motion to amend the patent (37 C.F.R. § 42.121).
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`2.
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`DUE DATE 2
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`Petitioner may file a reply to the Patent Owner’s response.
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`Petitioner may file an opposition to the motion to amend.
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`3.
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`DUE DATE 3
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`Patent Owner may file a sur-reply to Petitioner’s reply.
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`Patent Owner may also file either:
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`a. a reply to the opposition to the motion to amend and/or preliminary
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`guidance (if provided); or
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`b. a revised motion to amend.
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`NOTE: If Patent Owner files neither of the above papers (a reply to
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`the opposition or a revised motion to amend), and the Board has issued
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`preliminary guidance, Petitioner may file a reply to the preliminary
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`8
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 10 of 12 PageID #: 27579
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
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`guidance, no later than three (3) weeks after DUE DATE 3. Patent Owner
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`may file a sur-reply to Petitioner’s reply to the preliminary guidance no later
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`than three (3) weeks after Petitioner’s reply.
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`4.
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`DUE DATE 4
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`Either party may file a request for oral argument (may not be extended
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`by stipulation).
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`5.
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`DUE DATE 5
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`Petitioner may file a sur-reply to Patent Owner’s reply to the
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`opposition to the motion to amend.
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`Either party may file a motion to exclude evidence (37 C.F.R.
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`§ 42.64(c)).
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`6.
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`DUE DATE 6
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`Either party may file an opposition to a motion to exclude evidence.
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`Either party may request that the Board hold a pre-hearing conference.
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`7.
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`DUE DATE 7
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`Either party may file a reply to an opposition to a motion to exclude
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`evidence.
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`8.
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`DUE DATE 8
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`The oral argument (if requested by either party) shall be held on this
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`date. Approximately one month prior to the argument, the Board will issue
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`an order setting the start time of the hearing and the procedures that will
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`govern the parties’ arguments.
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`9
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 11 of 12 PageID #: 27580
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`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
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`DUE DATE APPENDIX
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`DUE DATE 1 .................................................................. September 11, 2020
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`Patent Owner’s response to the petition
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`Patent Owner’s motion to amend the patent
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`DUE DATE 2 ..................................................................... December 4, 2020
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`Petitioner’s reply to Patent Owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ....................................................................... January 15, 2021
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`Patent Owner’s sur-reply to reply
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`Patent Owner’s reply to opposition to motion to amend
`(or Patent Owner’s revised motion to amend)5
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`DUE DATE 4 ....................................................................... February 5, 2021
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`Request for oral argument (may not be extended by stipulation)
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`DUE DATE 5 ..................................................................... February 26, 2021
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`Petitioner’s sur-reply to reply to opposition to motion to amend
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`Motion to exclude evidence
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`DUE DATE 6 ........................................................................... March 5, 2021
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`Opposition to motion to exclude
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`Request for prehearing conference
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`DUE DATE 7 ......................................................................... March 12, 2021
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`Reply to opposition to motion to exclude
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`DUE DATE 8 ......................................................................... March 23, 2021
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`Oral argument (if requested)
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`5 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.
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`10
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`

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`Case 5:19-cv-00036-RWS Document 511-2 Filed 08/25/20 Page 12 of 12 PageID #: 27581
`
`IPR2020-00199 (Patent 6,329,794 B1)
`IPR2020-00204 (Patent 6,928,306 B2)
`
`FOR PETITIONER:
`
`Jennifer C. Bailey
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`
`
`FOR PATENT OWNER:
`
`Robert G. Pluta
`Amanda S. Bonner
`Luiz Miranda
`James A. Fussell
`William J. Barrow
`Saqib J. Siddiqui
`MAYER BROWN LLP
`Maxell-Apple-Service@mayerbrown.com
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`lmiranda@mayerbrown.com
`jfussell@mayerbrown.com
`wbarrow@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`11
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