`Tel: 571-272-7822
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`Paper No. 8
`Entered: February 15, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
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`v.
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`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`
`Case IPR2016-01621 (Patent 6,438,057 B1)
`Case IPR2016-01622 (Patent 6,850,414 B2)
`Case IPR2016-01623 (Patent 7,315,454 B2)1
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`HOMERE, Administrative Patent Judge.
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`
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`SCHEDULING ORDER
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`1 This Scheduling Order sets due dates that are identical in all three cases.
`We, therefore, exercise our discretion to issue one Scheduling Order to be
`filed in each case. The parties are not authorized to use this style heading
`for any subsequent papers.
`
`
`
`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`A. 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 to different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6).2 A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be filed promptly. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see section B, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
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`(Aug. 14, 2012) (Appendix D), apply to this proceeding. The Board may
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`impose an appropriate sanction for failure to adhere to the Testimony
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`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`1. INITIAL CONFERENCE CALL
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`The parties are directed to the Office Patent Trial Practice Guide, 77
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`Fed. Reg. at 48,765–66 for guidance in preparing for the initial conference
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`2 The parties may not change DUE DATE 4 with respect to the requirement
`for requesting oral argument, without express authorization from the panel.
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`2
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`
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`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
`
`call, and should be prepared to discuss (1) any proposed changes to this
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`Scheduling Order; (2) any motions the parties anticipate filing during the
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`trial; and (3) the parties’ availability to appear for a hearing or hearings
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`in Alexandria, VA; or San Jose, CA.3
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`2. DUE DATE 1
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`The patent owner may file—
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`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by DUE
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`DATE 1. If the patent owner elects not to file anything, the patent owner
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`must arrange a conference call with the parties and the Board. The patent
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`owner is cautioned that any arguments for patentability not raised and fully
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`briefed in the response will be deemed waived. See In re Nuvasive, Inc., 842
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`F.3d 1376, 1381 (Fed. Cir. 2016) (“NuVasive abandoned its challenge to the
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`public accessibility determination even though the PTAB had warned
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`NuVasive [in the Scheduling Order] that this would result in waiver.”).
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`3. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3 While we seek the parties’ input on the location of any hearing or hearings,
`we remind the parties that any hearing or hearings in these cases first must
`be requested by the parties by DUE DATE 4 and that the ultimate location
`of any hearing or hearings will depend heavily on the availability of hearing
`rooms at the various possible locations at the time of the request.
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`3
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`
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`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
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`4. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`5. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below) by
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`DUE DATE 4.
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`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
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`DUE DATE 4.
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`6. DUE DATE 5
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`a.
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`Each party must file any response to any motion for
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`observations on cross-examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`7. DUE DATE 6
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`Each party must file any reply to any opposition to a motion to
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`exclude evidence by DUE DATE 6.
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`8. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`4
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`
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`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
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`1.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
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`concise statement of the relevance of precisely identified testimony to a
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`precisely identified argument or portion of an exhibit. Each observation
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`should not exceed a single, short paragraph. The opposing party may
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`respond to the observation. Any response must be equally concise and
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`specific.
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`D. MOTION TO AMEND
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`Although the filing of a Motion to Amend is authorized under our
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`rules, Patent Owner must confer with us before filing any Motion to Amend.
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`37 C.F.R. § 42.121(a). Patent Owner should contact the Board to request
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`such a conference, if necessary, at least ten business days before DUE
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`DATE 1.
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`5
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`
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`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ....................... March 15, 2017 at 2:00p ET
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`DUE DATE 1 ............................................................................. May 16, 2017
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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 ......................................................................... August 18, 2017
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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 ................................................................... September 18, 2017
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ....................................................................... October 10, 2017
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`Motions for observations regarding cross-examination of reply
`witness
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`Motions to exclude evidence
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`Requests for oral argument4
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`DUE DATE 5 ....................................................................... October 23, 2017
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`Responses to motions for observations
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`Oppositions to motions to exclude evidence
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`4 Although the parties may stipulate to a different date for DUE DATE 4
`regarding the “Motion for observations regarding cross-examination of reply
`witness” and “Motions to exclude evidence,” the parties may not stipulate to
`a different date for the filing of “Requests for oral argument.”
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`6
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`
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`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
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`DUE DATE 6 ....................................................................... October 30, 2017
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`Replies to oppositions to motions to exclude
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`DUE DATE 7 ................................................................... November 14, 2017
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`Oral argument (if requested)
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`7
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`
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`IPR2016-01621 (Patent 6,438,057 B1)
`IPR2016-01622 (Patent 6,850,414 B2)
`IPR2016-01623 (Patent 7,315,454 B2)
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`For PETITIONER:
`
`David Hoffman
`FISH & RICHARDSON P.C.
`IPR37307-0007IP1@fr.com
`hoffman@fr.com
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`
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`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`IPR@sjclawpc.com
`mhopkins@sjclawpc.com
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`For PATENT OWNER:
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`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
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`8
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