`571-272-7822
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`Paper 18
`Entered: July 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VIZIO, INC.,
`Petitioner,
`
`v.
`
`NICHIA CORP.,
`Patent Owner.
`____________
`
`Case IPR2018-00437
`Patent No. 9,537,071 B2
`______________
`
`Before SALLY C. MEDLEY, WILLIAM V. SAINDON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
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`SCHEDULING ORDER
`and
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`GENERAL INSTRUCTIONS
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`37 C.F.R. § 42.5
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`
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`IPR2018-00437
`Patent No. 9,537,071 B2
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`A. GENERAL INSTRUCTIONS
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`1. Request for an Initial Conference Call
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`Unless at least one of the parties requests otherwise, we will not
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`conduct an initial conference call as described in the Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). The parties
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`must request an initial conference call if either party is aware of any conflicts
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`or concerns with DUE DATES 6 or 7 set forth in the Appendix of this
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`Scheduling Order. Any request for an initial conference call must be made
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`no later than 25 days after the institution of trial.
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`2. Standing Procedure for Requests for Conference Calls
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`If the parties request a conference call, including an initial conference
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`call, the parties must follow these procedures:
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`a. Prior to requesting a conference call, the parties must confer in
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`an effort to resolve any issue to be discussed with the Board, or
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`be prepared to explain to the Board why such a conference was
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`not possible.
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`b. Parties may request a conference call by contacting the Board at
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`the email address or telephone number listed above the caption
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`of this Order. Requests via email are expected and preferred;
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`requests via telephone should be reserved for time-critical
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`circumstances. Requests by email must copy opposing counsel.
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`Requests by telephone should include opposing counsel as
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`practicable.
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`c. The request must include a list of proposed issues and/or
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`motions to be discussed during the call.
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`Patent No. 9,537,071 B2
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`d. The request may include a brief background discussion of the
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`issue(s) and/or motion(s) to be discussed, but must not include
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`arguments. Email correspondence between the parties and the
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`Board is for administrative purposes only and is not a part of the
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`record.
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`e. The request must certify that the parties conferred in accordance
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`with 2.a., and must indicate the result of the conference (e.g.,
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`whether the non-requesting party opposes or does not oppose the
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`request).
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`f. The request must include a list of dates and times when both
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`parties are available for the call.
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`3. Motions to Seal, Protective Orders, and Confidential Information
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`Papers and exhibits filed with the Board are public unless designated
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`as confidential when filed. 37 C.F.R. § 42.14. Papers and exhibits may be
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`filed as confidential if filed with a motion to seal. Id. Those papers and
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`exhibits will remain under seal provisionally until the Board renders its
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`decision on the motion. Id. A motion to seal must include a proposed
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`protective order, or must refer to a protective order already approved in the
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`proceeding. 37 C.F.R. § 42.54(a). A protective order does not exist in this
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`proceeding unless the parties file one and the Board approves it. Board
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`approval typically does not occur until its decision on a motion to seal,
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`although the parties may request a conference call to seek approval prior to a
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`decision on a motion to seal if the particular circumstances of the case so
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`require.
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`Often, a party moves to seal confidential or protective order material of
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`the opposing party. In this case, the opposing party is authorized to file a
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`Patent No. 9,537,071 B2
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`response to the motion to seal to address why the motion to seal should be
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`granted. Such a response is due within 7 days of the filing of the motion to
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`seal and is subject to the same filing requirements (e.g., length, document
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`format) as the motion to seal.
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`We encourage the parties to adopt the Board’s default protective order
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`if they conclude that a protective order is necessary. See Default Protective
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`Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B (Aug.
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`14, 2012). If the parties choose to propose a protective order deviating from
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`the default protective order, they must submit the proposed protective order
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`jointly along with a marked-up comparison of the proposed and default
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`protective orders showing the differences; and the parties must explain why
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`the proposed deviations from the default protective order are necessary.
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`The Board has a strong interest in the public availability of the
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`proceedings. We advise the parties that redactions to documents filed in this
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`proceeding should be limited to isolated passages consisting entirely of
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`confidential information, and that the thrust of the underlying argument or
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`evidence must be clearly discernible from the redacted versions. We also
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`advise the parties that information subject to a protective order will likely
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`become public if identified in a final written decision in this proceeding, and
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`that a motion to expunge the information will not necessarily prevail over the
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`public interest in maintaining a complete and understandable file history. See
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`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
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`4. Motions to Amend
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`Patent Owner may file a motion to amend without prior authorization
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`from the Board. Nevertheless, Patent Owner must confer with the Board
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`before filing such a motion by requesting a conference call under the
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`procedures set forth above. See 37 C.F.R. § 42.121(a). The conference call
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`must occur at least two weeks before DUE DATE 1 in order to satisfy the
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`conferral requirement.
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`5. Discovery Disputes
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`The panel encourages parties to resolve disputes relating to discovery
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`on their own and in accordance with the precepts set forth in 37 C.F.R.
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`§ 42.1(b). To the extent that a dispute arises between the parties requiring
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`Board intervention, the parties are to follow the procedures for requesting a
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`conference call set forth above.
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`6. Depositions
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`The parties are advised that the Testimony Guidelines appended to the
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14,
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`2012) (Appendix D), apply to this proceeding. The Board may impose an
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`appropriate sanction for failure to adhere to the Testimony Guidelines.
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`37 C.F.R. § 42.12. For example, reasonable expenses and attorneys’ fees
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`incurred by any party may be levied on a person who impedes, delays, or
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`frustrates the fair examination of a witness.
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`Whenever a party submits a deposition transcript as an exhibit in this
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`proceeding, the submitting party shall file the full transcript of the deposition
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`rather than excerpts of only those portions being cited.
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`7. Cross-Examination
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`Except as the parties might otherwise agree, for each due date—
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`a.
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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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`b.
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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 be
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`used. Id.
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`8. Observations on Cross-Examination
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`Observations on cross-examination provide a party with a mechanism
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`to draw the Board’s attention to relevant cross-examination testimony of a
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`reply witness because no further substantive paper is permitted after the
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`reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012). The observations must be concise statements 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 observations. Any
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`response must be equally concise and specific. Absent express approval from
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`the panel, each party is authorized only one motion for observation,
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`regardless of the number of witnesses.
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`9. Additional Formatting Requirements of Papers and Exhibits
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`All papers and exhibits must include at least the proceeding number
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`and consecutive page numbers on each page. Citations to exhibits may be in
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`whatever manner the submitting party deems appropriate (i.e., stamped or
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`original pagination). Each page of an exhibit must also include the exhibit
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`number. The filing of complete documents and transcripts is encouraged,
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`rather than excerpts. Electronic documents filed with the Board should be
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`text searchable, to the extent feasible (e.g., having undergone optical
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`character recognition).
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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 to different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be promptly filed. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7. Due to scheduling constraints, such as hearing room
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`availability, the parties must request a conference call with the panel if
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`there are any conflicts that arise with DUE DATE 7 as soon as practicable,
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`which will be modified only upon a showing of good cause.
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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-examination
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`(37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the evidence and
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`cross-examination testimony.
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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 observations on the cross-examination
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`testimony of a reply witness (see section A.7, above) by 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 DUE
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`DATE 4.
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`5. DUE DATE 5
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`a.
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`Each party must file any reply to a petitioner observation on
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`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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`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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`IPR2018-00437
`Patent No. 9,537,071 B2
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ...................................... UPON REQUEST
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`DUE DATE 1 ................................................................... September 18, 2018
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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 11, 2018
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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 8, 2019
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`Patent Owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ........................................................................ January 29, 2019
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`Observations 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 ...................................................................... February 12, 2019
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`Response to observations
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`Opposition to motion to exclude
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`DUE DATE 6 ...................................................................... February 19, 2019
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ............................................................................ March 5, 2019
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`Oral argument (if requested)
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`IPR2018-00437
`Patent No. 9,537,071 B2
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`PETITIONER:
`
`Gabrielle E. Higgins
`Gabrielle.higgins@ropesgray.com
`
`Kathryn N. Hong
`Kathryn.hong@ropesgray.com
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`PATENT OWNER:
`
`Martin Zoltick
`mzoltick@rfem.com
`
`Michael Jones
`mjones@rfem.com
`
`Mark Rawls
`mrawls@rfem.com
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