Trials@uspto.gov
`571-272-7822
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`Paper 8
`Date: March 12, 2025
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`SMITH INTERFACE TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2024-01256
`Patent 11,740,727 B1
`
`
`Before MIRIAM L. QUINN, Acting Senior Lead Administrative Patent
`Judge, SHARON FENICK and LISA A. MURRAY, Administrative Patent
`Judges.
`MURRAY, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
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`571-272-7822
`
`Paper 8
`Date: March 12, 2025
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`SMITH INTERFACE TECHNOLOGIES, LLC,
`Patent Owner.
`
`IPR2024-01256
`Patent 11,740,727 B1
`
`
`Before MIRIAM L. QUINN, Acting Senior Lead Administrative Patent
`Judge, SHARON FENICK and LISA A. MURRAY, Administrative Patent
`Judges.
`MURRAY, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`IPR2024-01256
`Patent 11,740,727 B1
`
`A. GENERAL INSTRUCTIONS
`Initial and Additional Conference Calls
`1.
`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 Consolidated Trial Practice Guide (“Consolidated Practice Guide”)1 at 9–10,
`65 (guidance in preparing for a conference call); see also 84 Fed. Reg. 64,280
`(Nov. 21, 2019). A request for an initial conference call shall include a list of
`proposed motions, if any, to be discussed during the call.
`The parties may request additional conference calls as needed. Any email
`requesting a conference call with the Board should: (a) copy all parties,
`(b) indicate generally the relief being requested or the subject matter of the
`conference call, (c) include multiple times when all parties are available, (d) state
`whether the opposing party opposes any relief requested, and (e) if opposed, either
`certify that the parties have met and conferred telephonically or in person to
`attempt to reach agreement, or explain why such meet and confer did not occur.
`The email may not contain substantive argument and, unless otherwise authorized,
`may not include attachments. See Consolidated Practice Guide at 9–10.
`2.
`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. It is the
`responsibility of the party whose confidential information is at issue, not
`
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`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`IPR2024-01256
`Patent 11,740,727 B1
`necessarily the proffering party, to file the motion to seal.2 The Board encourages
`the parties to adopt the Board’s default protective order if they conclude that a
`protective order is necessary. See Consolidated Practice Guide at 107–122
`(App. B, Protective Order Guidelines and 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.
`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
`Consolidated Practice Guide at 21–22.
`3.
`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.
`
`
`2 If the entity whose confidential information is at issue is not a party to the
`proceeding, please contact the Board.
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`3
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`IPR2024-01256
`Patent 11,740,727 B1
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`Testimony
`4.
`The parties are reminded that the Testimony Guidelines appended to the
`Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines) 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.
`5.
`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.
`6. 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. 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. See Section B below regarding DUE DATES.
`Any motion to amend and briefing related to such a motion shall comply
`with the rules pertaining to motions to amend (37 C.F.R. § 42.121) and the
`practices and procedures described in Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-
`01129, Paper 15 (PTAB Feb. 25, 2019) (precedential).
`Patent Owner has the option to receive preliminary guidance from the Board
`on its motion to amend. See 37 C.F.R. § 42.121(e). If Patent Owner elects to
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`4
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`IPR2024-01256
`Patent 11,740,727 B1
`request preliminary guidance from the Board on its motion, it must do so in its
`motion to amend filed on DUE DATE 1. Id. at § 42.121(a)(1)(ii).
`At DUE DATE 3, Patent Owner may file a reply to the opposition to the
`motion to amend and/or the preliminary guidance. 37 C.F.R. § 42.121(e)(3). In
`lieu of a reply, Patent Owner has the option to file a revised motion to amend that
`addresses the issues raised in the preliminary guidance or in petitioner’s opposition
`to the motion to amend. Id. at § 42.121(f)(1)-(2). Patent Owner may elect to file a
`revised motion to amend even if Patent Owner did not request to receive
`preliminary guidance on its motion to amend. A revised motion to amend must
`include one or more new proposed substitute claims in place of the previously
`presented substitute claims, where each new proposed substitute claim presents a
`new claim amendment. Id.
`If Patent Owner files a revised motion to amend, the Board may determine
`whether to request the Chief Administrative Patent Judge to extend the final
`written decision deadline more than one year from the date a trial is instituted in
`accordance with § 42.100(c) and whether to extend any remaining deadlines under
`§ 42.5(c)(2). 37 C.F.R. § 42.121(f)(1). Typically the Board will enter a revised
`scheduling order setting the briefing schedule for that revised motion and adjusting
`other due dates as needed.
`At DUE DATE 5, Petitioner may file a sur-reply that is limited to
`responding to the preliminary guidance and/or arguments made in the patent
`owner’s reply brief. Id. at § 42.121(e)(3). The sur-reply may not be accompanied
`by new evidence, but may comment on any new evidence filed with the reply
`and/or point to cross-examination testimony of a reply witness, if relevant to the
`arguments made in the reply brief. Id.
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`5
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`IPR2024-01256
`Patent 11,740,727 B1
`If the Board issues preliminary guidance on the motion to amend, and Patent
`Owner files neither a reply to the opposition to the motion to amend nor a revised
`motion to amend at DUE DATE 3, Petitioner may file a reply to the Board’s
`preliminary guidance, no later than three (3) weeks after DUE DATE 3 or at any
`other DUE DATE that the Board specifies in a revised scheduling order. The reply
`may only respond to the preliminary guidance and may not be accompanied by
`new evidence. 37 C.F.R. § 42.121(e)(4). Patent Owner may file a sur-reply in
`response to Petitioner’s reply to the Board’s preliminary guidance. Id. The sur-
`reply may only respond to petitioner’s reply and may not be accompanied by new
`evidence. Id. The sur-reply must be filed no later than three (3) weeks after
`Petitioner’s reply or at any other DUE DATE that the Board specifies in a revised
`scheduling order.
`In the event the Board requests examination assistance pursuant to 37 C.F.R.
`§ 42.121(d)(3)(ii), the parties will be notified of the request and may adjust the
`scheduling order as needed.
`
`Oral Argument
`7.
`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.
`The parties may request that the oral argument be held at the USPTO
`headquarters in Alexandria, Virginia, or at the Dallas, Texas, Southwest Regional
`Office. The parties may also request that the oral argument instead be held
`virtually by videoconference. The parties should state in the request for oral
`argument, DUE DATE 4, whether the parties would prefer either a video hearing
`or an in-person hearing, and if the latter, which location they would prefer. To the
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`IPR2024-01256
`Patent 11,740,727 B1
`extent the parties disagree, they should meet and confer; if the dispute cannot be
`resolved by meeting and conferring, the parties should inform the Board of each
`party’s individual preferences. PTAB will only conduct an in-person hearing when
`requested by all parties.
`Note that the Board may not be able to honor the parties’ preferences due to,
`among other things, the availability of hearing room resources, the needs of the
`panel, and USPTO policy at the time of the hearing. The Board will consider the
`parties’ request and notify the parties of how and where the hearing will be
`conducted.
`For in-person hearings, 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.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop their
`skills and to aid in succession planning for the next generation. The Board defines
`a LEAP practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB. Parties are
`encouraged to participate in the Board’s LEAP program.3 The Board will grant up
`to fifteen (15) minutes of additional argument time to that party, depending on the
`length of the proceeding and the PTAB’s hearing schedule. A party should submit
`
`
`3 Information about the LEAP program can be found at www.uspto.gov/leap.
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`7
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`IPR2024-01256
`Patent 11,740,727 B1
`a request, no later than at least five (5) business days before the oral hearing, by
`email to the Board at PTABHearings@uspto.gov.4
`All practitioners appearing before the Board shall demonstrate the highest
`professional standards. All practitioners are expected to have a command of the
`factual record, the applicable law, and Board procedures, as well as the authority to
`commit the party they represent. The Board discerns that it is often LEAP
`practitioners who have the best understanding of the facts of the case and the
`evidence of record, and the Board encourages their participation.
`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, 5, and 6,
`as well as the portion of DUE DATE 2 related to Petitioner’s reply (earlier or later,
`but no later than DUE DATE 3 for Patent Owner’s sur-reply) and the portion of
`DUE DATE 3 related to Patent Owner’s sur-reply (earlier or later, but no later than
`DUE DATE 7). The parties may not stipulate to a different date for the portion of
`DUE DATE 2 related to Petitioner’s opposition to a motion to amend, or for the
`portion of DUE DATE 3 related to Patent Owner’s reply to an opposition to a
`motion to amend (or Patent Owner’s revised motion to amend) without prior
`authorization from the Board. In stipulating to move any due dates in the
`scheduling order, the parties must be cognizant that the Board requires four weeks
`after the filing of an opposition to the motion to amend (or the due date for the
`opposition, if none is filed) for the Board to issue its preliminary guidance, if
`
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`4 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available at www.uspto.gov/leap.
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`8
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`IPR2024-01256
`Patent 11,740,727 B1
`requested by Patent Owner. 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 4, 7, and 8.
`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.
`DUE DATE 1
`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 not raised in the
`response may be deemed waived.
`b. A motion to amend the patent (37 C.F.R. § 42.121) after conferring with
`the Board under 37 C.F.R. § 42.121(a).
`DUE DATE 2
`2.
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`DUE DATE 3
`3.
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may also file either:
`a. a reply to the opposition to the motion to amend and/or preliminary
`guidance (if provided); or
`b. a revised motion to amend.
`NOTE: If Patent Owner files neither of the above papers (a reply to the
`opposition or a revised motion to amend), and the Board has issued preliminary
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`IPR2024-01256
`Patent 11,740,727 B1
`guidance, Petitioner may file a reply to the preliminary guidance, no later than
`three (3) weeks after DUE DATE 3. Patent Owner may file a sur-reply to
`Petitioner’s reply to the preliminary guidance no later than three (3) weeks after
`Petitioner’s reply.
`
`DUE DATE 4
`4.
`Either party may file a request for oral argument (may not be extended by
`stipulation).
`
`DUE DATE 5
`5.
`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)).
`DUE DATE 6
`6.
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`DUE DATE 7
`7.
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`DUE DATE 8
`8.
`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.
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`IPR2024-01256
`Patent 11,740,727 B1
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................... June 5, 2025
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... August 28, 2025
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ......................................................................... October 9, 2025
`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
`OR Patent Owner’s revised motion to amend
`
`DUE DATE 4 ....................................................................... October 30, 2025
`Request for oral argument (may not be extended by stipulation)
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`DUE DATE 5 ................................................................... November 20, 2025
`Petitioner’s sur-reply to the opposition to the motion to amend
`Motion to exclude evidence
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`DUE DATE 6 ...................................................................... December 1, 2025
`Opposition to motion to exclude
`Request for pre-hearing conference
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`DUE DATE 7 ...................................................................... December 8, 2025
`Reply to opposition to motion to exclude
`
`DUE DATE 8 .................................................................... December 16, 2025
`Oral argument (if requested)
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`11
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`IPR2024-01256
`Patent 11,740,727 B1
`FOR PETITIONER:
`
`W. Karl Renner
`David Holt
`Kenneth W. Darby, Jr.
`Jennifer Huang
`IPR50095-0175IP1@fr.com
`
`
`FOR PATENT OWNER:
`
`Eagle H. Robinson
`Daniel S. Leventhal
`Chad Wallis
`eagle.robinson@nortonrosefulbright.com
`daniel.leventhal@nortonrosefulbright.com
`chad.wallis@nortonrosefulbright.com
`
`
`12
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