`Tel: 571.272.7822
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`
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`Paper 9
`Entered: May 17, 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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`HUAWEI DEVICE CO., LTD., LG ELECTRONICS, INC., AND ZTE
`(USA) INC.,
`Petitioner,
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`v.
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`
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`
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`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Cases IPR2017-00415
`Patent 6,895,449 B2
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
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`
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`SCHEDULING ORDER
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`IPR2017-00415
`Patent 6,895,449 B2
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`As an initial matter, no initial conference call is scheduled for the
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`above-identified proceedings. The parties are directed to contact the Board
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`within a month of this Order if either party disagrees with holding a
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`consolidated hearing for the above-identified proceedings or there is a need
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`to discuss proposed changes to this Scheduling Order or proposed motions.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,765–66 (guidance
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`in preparing for the initial conference call).
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`
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`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 above-identified proceedings. The parties may stipulate to different
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`dates for DUE DATES 1 through 5 (earlier or later, but no later than DUE
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`DATE 6). A notice of the stipulation, specifically identifying the changed
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`due dates, must be promptly filed. The parties may not stipulate to an
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`extension of DUE 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
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`cross-examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending
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`on the evidence and cross-examination testimony (see section B, below).
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`If requested, a consolidated oral hearing for the aboved-identified
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`proceedings will be held on DUE DATE 7. Any representation made by
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`counsel at the consolidated hearing will be applicable to and useable in all
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`the proceedings which have underlying basis for the representation.
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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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`2
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`IPR2017-00415
`Patent 6,895,449 B2
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`(Aug. 14, 2012) (Appendix D), apply to these proceedings. 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. 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 in the
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`response will be deemed waived.
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`2. 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. 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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`4. 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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`3
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`IPR2017-00415
`Patent 6,895,449 B2
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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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`5. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`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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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`7. 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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`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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`IPR2017-00415
`Patent 6,895,449 B2
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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. at 48,767–68. The observation must be a concise statement of the
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`relevance of precisely identified testimony to a precisely identified argument
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`or portion of an exhibit. Each observation should not exceed a single, short
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`paragraph. The opposing party may respond to the observation. Any
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`response must be equally concise and specific.
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`D. MOTION TO AMEND
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`
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`Although the filing of a Motion to Amend is authorized under the trial
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`Rules, Patent Owner must confer with the Board, preferreably no less than
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`ten business days prior to DUE DATE 1, before filing any Motion to
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`Amend.
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`5
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`IPR2017-00415
`Patent 6,895,449 B2
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL .............................................. Upon Request
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`DUE DATE 1 ........................................................................ August 17, 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 .................................................................. November 17, 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 .................................................................... December 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 ......................................................................... January 8, 2018
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ....................................................................... January 22, 2018
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ....................................................................... January 29, 2018
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ..................................................................... February 13, 2018
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`Oral argument (if requested)
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`6
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`
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`IPR2017-00415
`Patent 6,895,449 B2
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`For PETITIONER:
`
`David A. Garr
`Gregory S. Discher
`COVINGTON & BURLING LLP
`Huawei-Papst_Covington@cov.com
`
`Herbert H. Finn
`Jonathan E. Giroux
`GREENBERG TRAURIG, LLP
`LG-Papst-IPR@gtlaw.com
`
`Scott R. Miller
`Darren Franklin
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`legalTm-Papst-ZTE@sheppardmullin.com
`
`
`For PATENT OWNER:
`
`Gregory S. Donahue
`Minghui Yang
`DINOVO PRICE ELLWANGER & HARDY LLP
`docketing@dpelaw.com
`Anthony L. Meola
`Jason A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS, LLP
`ameola@iplawusa.com
`jmurphy@iplawusa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
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`7
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