Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 14
`Entered: December 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,1
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Cases IPR2016-01213
`Patent 8,504,746 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`
`
`1 Although Fujifilm Holdings America Corporation is not listed with the
`other Petitioners in the section entitled “Real Parties-In-Interest” in this
`Petition, we presume, for purposes of this Decision, that this deficiency is a
`typo. Patent Owner appears to agree with this understanding. Prelim. Resp.
`8 n.2 (“The instant Petition appears to inadvertently omit FUJIFILM
`Holdings America Corporation from its list of real-parties-in-interest.
`However, [it] appears in the Power of Attorney ([Paper 2]), as well as the
`other [related] petitions.”).
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 14
`Entered: December 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,1
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Cases IPR2016-01213
`Patent 8,504,746 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`
`
`1 Although Fujifilm Holdings America Corporation is not listed with the
`other Petitioners in the section entitled “Real Parties-In-Interest” in this
`Petition, we presume, for purposes of this Decision, that this deficiency is a
`typo. Patent Owner appears to agree with this understanding. Prelim. Resp.
`8 n.2 (“The instant Petition appears to inadvertently omit FUJIFILM
`Holdings America Corporation from its list of real-parties-in-interest.
`However, [it] appears in the Power of Attorney ([Paper 2]), as well as the
`other [related] petitions.”).
`
`
`
`Case IPR2016-01213
`Patent 8,504,746 B2
`
`BISK, Administrative Patent Judge.
`
`
`
`
`
`.
`
`SCHEDULING ORDER
`
` As an initial matter, no initial conference call is scheduled for the
`
`above-identified proceedings. The parties are directed to contact the Board
`
`within a month of this Order if either party disagrees with holding a
`
`consolidated hearing for the above-identified proceedings or there is a need
`
`to discuss proposed changes to this Scheduling Order or proposed motions.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,765–66 (guidance
`
`in preparing for the initial conference call).
`
`
`
`A. DUE DATES
`
`This order sets due dates for the parties to take action after institution
`
`of the above-identified proceedings. The parties may stipulate to different
`
`dates for DUE DATES 1 through 5 (earlier or later, but no later than DUE
`
`DATE 6). A notice of the stipulation, specifically identifying the changed
`
`due dates, must be promptly filed. The parties may not stipulate to an
`
`extension of DUE DATES 6 and 7.
`
`In stipulating to 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 (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 (see section B, below).
`
`If requested, a consolidated oral hearing for the aboved-identified
`
`proceedings will be held on DUE DATE 7. Any representation made by
`
`2
`
`
`
`Case IPR2016-01213
`Patent 8,504,746 B2
`
`counsel at the consolidated hearing will be applicable to and useable in all
`
`
`
`the proceedings which have underlying basis for the representation.
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
`
`(Aug. 14, 2012) (Appendix D), apply to these proceedings. The Board may
`
`impose an appropriate sanction for failure to adhere to the Testimony
`
`Guidelines. 37 C.F.R. § 42.12. 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.
`
`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`A motion to amend the patent (37 C.F.R. § 42.121).
`
`The patent owner must file any such response or motion to amend by DUE
`
`DATE 1. If the patent owner elects not to file anything, the patent owner
`
`must arrange a conference call with the parties and the Board. The patent
`
`owner is cautioned that any arguments for patentability not raised in the
`
`response will be deemed waived.
`
`2. DUE DATE 2
`
`The petitioner must file any reply to the patent owner’s response and
`
`opposition to the motion to amend by DUE DATE 2.
`
`3. DUE DATE 3
`
`The patent owner must file any reply to the petitioner’s opposition to
`
`patent owner’s motion to amend by DUE DATE 3.
`
`3
`
`
`
`Case IPR2016-01213
`Patent 8,504,746 B2
`
`4. DUE DATE 4
`
`
`
`a.
`
`Each party must file any motion for an observation on the
`
`cross-examination testimony of a reply witness (see section C, below) by
`
`DUE DATE 4.
`
`b.
`
`Each party must file any motion to exclude evidence (37 C.F.R
`
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
`
`DUE DATE 4.
`
`5. DUE DATE 5
`
`a.
`
`Each party must file any response to an observation on cross-
`
`examination testimony by DUE DATE 5.
`
`b.
`
`Each party must file any opposition to a motion to exclude
`
`evidence by DUE DATE 5.
`
`6. DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`7. DUE DATE 7
`
`The oral argument (if requested by either party) is set for DUE
`
`DATE 7.
`
`B. CROSS-EXAMINATION
`
`Except as the parties might otherwise agree, for each due date—
`
`1.
`
`Cross-examination begins after any supplemental evidence is
`
`due. 37 C.F.R. § 42.53(d)(2).
`
`4
`
`
`
`Case IPR2016-01213
`Patent 8,504,746 B2
`
`
`
`
`2.
`
`Cross-examination 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.
`
`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`
`A motion for observation on cross-examination provides the parties
`
`with a mechanism to draw the Board’s attention to relevant cross-
`
`examination testimony of a reply witness because no further substantive
`
`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
`
`Fed. Reg. at 48,767–68. The observation must be a concise statement of the
`
`relevance of precisely identified testimony to a precisely identified argument
`
`or portion of an exhibit. Each observation should not exceed a single, short
`
`paragraph. The opposing party may respond to the observation. Any
`
`response must be equally concise and specific.
`
`D. MOTION TO AMEND
`
`
`
`Although the filing of a Motion to Amend is authorized under the trial
`
`Rules, Patent Owner must confer with the Board, preferreably no less than
`
`ten business days prior to DUE DATE 1, before filing any Motion to
`
`Amend.
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2016-01213
`Patent 8,504,746 B2
`
`DUE DATE APPENDIX
`
`
`
`INITIAL CONFERENCE CALL .............................................. Upon Request
`
`DUE DATE 1 ......................................................................... March 15, 2017
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ June 15, 2017
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. July 17, 2017
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .......................................................................... August 7, 2017
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ........................................................................ August 21, 2017
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................ August 28, 2017
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................. September 14, 2017
`
`Oral argument (if requested)
`
`
`
`
`
`6
`
`
`
`
`
`Case IPR2016-01213
`Patent 8,504,746 B2
`
`For PETITIONER:
`
`Gregory S. Cordrey
`JEFFER MANGELS BUTLER & MITCHELL, LLP
`gcordrey@jmbm.com
`
`T. Vann Pearce, Jr.
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`
`David M. Maiorana
`F. Drexel Feeling
`Matthew W. Johnson
`David L. Witcoff
`Marc S. Blackman
`JONES DAY
`dmaiorana@jonesday.com
`f.dfeeling@jonesday.com
`mwjohnson@jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`
`Dion M. Bregman
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`
`
`
`For PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`
`Anthony L. Meola, Jr.
`THE MEOLA FIRM, PLLC
`info@themeolafirm.com
`
`7
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