Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 9
`Entered: October 5, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. AND
`TELEFONAKTIELBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-00727 (Patent 6,628,629 B1)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent RE46,206 E)1
`_______________
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`parties are not authorized to use this heading style in any subsequent
`papers.
`
`
`571.272.7822
`
`
`Paper No. 9
`Entered: October 5, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. AND
`TELEFONAKTIELBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-00727 (Patent 6,628,629 B1)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent RE46,206 E)1
`_______________
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`parties are not authorized to use this heading style in any subsequent
`papers.
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions that have not been authorized in this Order or other
`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
`preparing for the initial conference call). A request for an initial conference
`call shall include a list of proposed motions, if any, to be discussed during
`the call.
`2. Patent Owner must confer with us before filing any Motion to
`Amend. See 37 C.F.R. § 42.121(a). Patent Owner should arrange for a
`conference call with the panel and opposing counsel at least 10 business
`days before DUE DATE 1 in order to satisfy the conferral requirement.
`3. Protective Order
`No protective order shall apply to this proceeding until the Board
`enters one. If either party files a motion to seal before entry of a protective
`order, a jointly proposed protective order shall be filed as an exhibit with the
`motion. The Board encourages the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See
`Practice Guide, App’x B (Default Protective Order). 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
`differences between the two and explain why good cause exists to deviate
`from the default protective order.
`
`
`
`2
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`
`The Board has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in this proceeding should be
`limited to the minimum amount necessary to protect confidential
`information, and 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 may 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 Practice
`Guide 48,761.
`4. Discovery Disputes
`The Board encourages parties to resolve disputes relating to discovery
`on their own. To the extent that a dispute arises between the parties relating
`to discovery, the parties must 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. In any request for a
`conference call with the Board to resolve a discovery dispute, the requesting
`party shall: (a) certify that it has conferred with the other party in an effort to
`resolve the dispute; (b) identify with specificity the issues for which
`agreement has not been reached; (c) identify the precise relief to be sought;
`and (d) propose specific dates and times at which both parties are available
`for the conference call.
`5. Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, Appendix D, apply to this proceeding. The Board
`may impose an appropriate sanction for failure to adhere to the Testimony
`3
`
`
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`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: Cross-
`examination ordinarily takes place after any supplemental evidence is due.
`37 C.F.R. § 42.53(d)(2). Cross-examination ordinarily 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. Oral Argument
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Due Date Appendix. Unless the Board
`notifies the parties otherwise, oral argument, if requested, will be held at the
`USPTO Headquarters in Alexandria, VA. The parties may request that the
`oral argument instead be held at the Detroit, Michigan, USPTO Regional
`Office. The parties should meet and confer, and jointly propose the parties’
`preference at the initial conference call, if requested. Alternatively, the
`parties may jointly file a paper stating their preference for the hearing
`4
`
`
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`location within one month of this order. Note that the Board may not be
`able to honor the parties’ preference of hearing location due to, among other
`things, the availability of hearing room resources and the needs of the panel.
`The Board will consider the location request and notify the parties
`accordingly if a request for change in location is granted.
`Seating in the Board’s hearing rooms may be limited, and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals will attend the argument on its behalf, the
`party should notify the Board as soon as possible, and no later than the
`request for oral argument. Parties should note that the earlier a request for
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
`B. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate 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 an extension of DUE
`DATES 6 and 7, or to the requests for oral hearing. In stipulating 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
`(§ 42.64(b)(2)), to conduct cross-examination (§ 42.53(d)(2)), and to draft
`papers depending on the evidence and cross-examination testimony.
`
`
`
`5
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`
`1. DUE DATE 1
`Patent Owner may file—
`a. A response to the petition (37 C.F.R. § 42.120). If Patent Owner
`elects not to file a response, Patent Owner must arrange a conference call
`with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.
`b. A motion to amend the patent (37 C.F.R. § 42.121). 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. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent Owner
`should request a conference call with the Board no later than two weeks
`prior to DUE DATE 1. The parties are directed to the Board’s Guidance on
`Motions to Amend in view of Aqua Products
`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_
`to_amend_11_2017.pdf), and Western Digital Corp. v. SPEX Techs., Inc.,
`Case IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (providing
`information and guidance on motions to amend).
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may file a reply to the opposition to the motion to amend.
`
`
`
`6
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`
`4. DUE DATE 4
`Petitioner may file a sur-reply to Patent Owner’s reply to the opposition
`to the motion to amend. Either party may file a motion to exclude evidence
`(37 C.F.R. § 42.64(c)).
`5. DUE DATE 5
`Either party may file an opposition to a motion to exclude evidence.
`6. DUE DATE 6
`Either party may file a reply to an opposition to a motion to exclude
`evidence. Either party may request that the Board hold a pre-hearing
`conference.
`7. DUE DATE 7
`The oral argument (if requested by either party) shall be held on this date.
`Approximately one month prior to the argument, the Board will issue an
`order setting the start time of the hearing and the procedures that will govern
`the parties’ arguments.
`
`
`
`
`7
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL……………………………. Upon Request
`
`DUE DATE 1 .......................................................................... January 7, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .............................................................................. April 5, 2019
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ............................................................................... May 6, 2019
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the petition
`Patent Owner’s reply to Petitioner’s opposition to the motion to amend
`
`DUE DATE 4 ............................................................................... June 5, 2019
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition to the motion
`to amend
`Motion to exclude evidence
`Request for oral argument (parties may not stipulate to an extension for the
`request for oral argument)
`DUE DATE 5 ............................................................................. June 12, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................. June 19, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ................................................................................ July 9, 2019
`Oral argument (if requested)
`
`
`
`
`8
`
`
`
`Case IPR2018-00727 (Patent 6,628,629)
`Cases IPR2018-00758, IPR2018-00782 (Reissued Patent 46,206)
`
`
`PETITIONER:
`
`Brian W. Oaks
`Harrison Rich
`Jeffrey S. Becker
`BAKER BOTTS L.L.P.
`Brian.oaks@bakerbotts.com
`Harrison.rich@bakerbotts.com
`Jeff.becker@bakerbotts.com
`
`
`
`PATENT OWNER:
`
`Peter J. McAndrews
`Sharon A. Hwang
`Andrew B. Karp
`McANDREWS, HELD & MALLOY. Ltd.
`pmcandrews@mcandrews-ip.com
`shwan@mcandrews-ip.com
`akarp@mcandrews-ip.com
`
`Tim R. Seeley
`Russ Rigby
`INTELLECTUAL VENTRUES MANAGEMENT
`tm@intven.com
`rrgby@intven.com
`
`
`
`
`9
`
`
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