`Tel: 571-272-7822
`
`Paper 13
`Entered: November 16, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VISIONSENSE CORP.,
`Petitioner,
`
`v.
`
`NOVADAQ TECHNOLOGIES INC.,
`Patent Owner.
`_______________
`
`Cases IPR2017-01426
`Patent 8,892,190 B2
`_______________
`
`
`Before HYUN J. JUNG, MICHAEL L. WOODS, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`A. GENERAL INSTRUCTIONS
`
`1. Requests for an Initial Conference Call
`
`Unless at least one of the parties requests otherwise, we will not
`
`conduct an initial conference call as described in the Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). In lieu of
`
`such a call, we instruct the parties as follows:
`
`a.
`
`If a party wishes to request an initial conference call, that party
`
`shall request the call no later than 25 days after the institution of trial;
`
`b.
`
`A request for a conference call shall include: (1) a list of
`
`proposed motions, if any, to be discussed during the call; and (2) a list of
`
`dates and times when the parties are available for the call; and
`
`c.
`
`The parties shall be prepared to discuss during the initial
`
`conference call their concerns, if any, relating to the schedule in this
`
`proceeding as set forth below.
`
`2. Protective Order
`
`A protective order does not exist in this proceeding unless the parties
`
`file one and the Board approves it. If either party files a motion to seal
`
`before entry of a protective order, a jointly proposed protective order should
`
`be presented as an exhibit to the motion. We encourage the parties to adopt
`
`the Board’s default protective order if they conclude that a protective order
`
`is necessary. See Default Protective Order, Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, App. B. If the parties choose to propose a
`
`protective order deviating from the default protective order, they must
`
`submit the proposed protective order jointly along with a marked-up
`
`comparison of the proposed and default protective orders showing the
`
` 2
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`differences; and the parties must explain why the proposed deviations from
`
`the default protective order are necessary.
`
`The Board has a strong interest in the public availability of the
`
`proceedings. We advise the parties that redactions to documents filed in this
`
`proceeding should be limited to isolated passages consisting entirely of
`
`confidential information, and that the thrust of the underlying argument or
`
`evidence must be clearly discernible from the redacted versions. We also
`
`advise the parties that information subject to a protective order will become
`
`public if identified in a final written decision in this proceeding, and that a
`
`motion to expunge the information will not necessarily prevail over the
`
`public interest in maintaining a complete and understandable file history.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`3. Motion to Amend
`
`Patent Owner may file a motion to amend without prior authorization
`
`from the Board. Nevertheless, Patent Owner must confer with the Board
`
`before filing such a motion. See 37 C.F.R. § 42.121(a). Patent Owner should
`
`arrange for a conference call with the panel and opposing counsel at least one
`
`week before DUE DATE 1 in order to satisfy the conferral requirement.
`
`4. Discovery Disputes
`
`The panel encourages parties to resolve disputes relating to discovery
`
`on their own and in accordance with the precepts set forth in 37 C.F.R.
`
`§ 42.1(b). To the extent that a dispute arises between the parties relating to
`
`discovery, the parties shall meet and confer to resolve such a dispute before
`
`contacting the Board. If attempts to resolve the dispute fail, a party may
`
`request a conference call with the Board and the other party in order to seek
`
`authorization to move for relief.
`
` 3
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`
`In any request for a conference call with the Board to resolve a
`
`discovery dispute, the requesting party shall: (1) certify that it has conferred
`
`with the other party in an effort to resolve the dispute; (2) identify with
`
`specificity the issues for which agreement has not been reached; (3) identify
`
`the precise relief to be sought; and (4) propose specific dates and times at
`
`which both parties are available for the conference call.
`
`5. Depositions
`
`The parties are advised that the Testimony Guidelines appended to the
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (Appendix D),
`
`apply to this proceeding. 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.
`
`Whenever a party submits a deposition transcript as an exhibit in this
`
`proceeding, the submitting party shall file the full transcript of the deposition
`
`rather than excerpts of only those portions being cited. After a deposition
`
`transcript has been submitted as an exhibit, all parties who subsequently cite
`
`to portions of the transcript shall cite to the first-filed exhibit rather than
`
`submitting another copy of the same transcript.
`
`6. Cross-Examination
`
`Except as the parties might otherwise agree, for each due date—
`
`a.
`
`Cross-examination begins after any supplemental evidence is
`
`due. 37 C.F.R. § 42.53(d)(2).
`
` 4
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`
`b.
`
`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.
`
`7. Observations on Cross-Examination
`
`Observations on cross-examination provide 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 48,768. The observations must be concise statements 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 observations. Any
`
`response must be equally concise and specific.
`
`B. DUE DATES
`
`This order sets due dates for the parties to take action after institution
`
`of the proceeding. 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.
`
` 5
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`
`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.
`
`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 A.7., above) 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.
`
` 6
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`
`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.
`
` 7
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ...................................... UPON REQUEST
`
`DUE DATE 1 ...................................................................... February 20, 2018
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................. May 17, 2018
`
`Petitioners’ reply to patent owner’s response to petition
`
`Petitioners’ opposition to motion to amend
`
`DUE DATE 3 ............................................................................. June 18, 2018
`
`Patent owner’s reply to petitioners’ opposition to motion to amend
`
`DUE DATE 4 ................................................................................ July 9, 2018
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .............................................................................. July 23, 2018
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 .............................................................................. July 30, 2018
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ......................................................................... August 14, 2018
`
`Oral argument (if requested)
`
` 8
`
`
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`PETITIONER:
`
`Joseph M. Casino
`WIGGIN AND DANA LLP
`jcasino@wiggin.com
`
`PATENT OWNER:
`
`Jonathan Bockman
`Matthew I. Kreeger
`Christopher Gloria
`MORRISON & FOERSTER LLP
`JBockman@mofo.com
`MKreeger@mofo.com
`CGloria@mofo.com
`
`
` 9
`
`
`
`
`
`