Microsoft Corp. v. Proxyconn, Inc.


Paper 18, December 21, 2012

IPR2012-00026 (TLG) (Patent 6,657,717 B1)

[The Board’s scheduling order sets dates for motions, responses, replies, and oral hearings]

FACTS

Microsoft requested an IPR for several claims of a patent owed by Proxyconn. This is a scheduling order for the proceedings.

HOLDING

A. This order sets due dates for the parties to take action after institution of the proceeding:

Parties may stipulate to different dates for DUE DATES 1-3; parties may not stipulate to an extension of DUE DATES 4-7.

DUE DATE 1:

The patent owner may file:

  • A response to the petition (37 C.F.R. § 42.120), and
  • A motion to amend the patent (37 C.F.R. § 42.121).

If the patent owner elects not to file anything, the patent owner must arrange a conference call with the parties and the Board.

DUE DATE 2:

  • The petitioner must file any reply to the patent owner’s response and opposition to the motion to amend.

DUE DATE 3:

  • The patent owner must file any reply to the petitioner’s opposition to patent owner’s motion to amend.

DUE DATE 4:

  • The petitioner must file any motion for an observation on the cross-examination testimony of a reply witness.
  • 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)).

DUE DATE 5:

  • The patent owner must file any reply to a petitioner observation on cross-examination testimony.
  • Each party must file any opposition to a motion to exclude evidence.

DUE DATE 6:

  • Each party must file any reply for a motion to exclude evidence.

DUE DATE 7:

  • The oral argument (if requested by either party).

B. Cross examination:

Except as the parties might otherwise agree, for each due date—

1. Cross-examination begins after any supplemental evidence is due. 37 C.F.R. §§ 42.53(d)(2).

2. 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.

C. Motion for observation on cross-examination:

The observation must be a concise statement 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 patent owner may respond to the observation. Any response must be equally concise and specific.

TAKEAWAY

The Board’s scheduling order sets dates for motions, responses, replies, and oral hearings.

 

To view full Order click here.