Trials@uspto.gov
`571-272-7822
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` Paper 21
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`Entered: February 6, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX CORP.
`Petitioner
`
`
`
`
`
`v.
`
`ALCON RESEARCH, LTD
`Patent Owner.
`____________
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2) 1
`
`____________
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This order addresses the consolidated initial conference held on February 3, 2014,
`for all three cases. We exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`subsequent papers.
`
`

`

`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`
`I.
`
`Introduction
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`
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`On February 3, 2014, an initial conference call was held including the
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`following individuals:
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`(1) Eldora Ellison and Ralph Powers III, counsel for Apotex Corp.
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`(“Petitioner”);
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`(2) Stanley Fisher, counsel for Alcon Research, Ltd. (“Patent Owner”); and
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`(3) Lora M. Green, Francisco C. Prats and Rama G. Elluru, Administrative
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`Patent Judges.
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`A court reporter was present on the call, and Petitioner indicated that it
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`would file a copy of the hearing transcript as an exhibit.2
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`II.
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`Scheduling Order
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`The purpose of the call was to discuss any motions that the parties intend to
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`file and any proposed changes to the Scheduling Orders (Papers 10, 9 and 10). 3
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`The parties indicated that they have reached an agreement as to modifying Due
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`Dates 1-3 set forth in the Scheduling Orders, and are working on a stipulation to
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`that effect. The parties were reminded that a stipulation changing Due Dates 1-3
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`must be filed with the Board. The parties were advised that Board authorization of
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`such stipulation is not required. No other issues with respect to the Scheduling
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`Orders were raised by the parties and, accordingly, the Board sees no reason to
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`modify the Scheduling Orders at this time.
`
`
`
`
`2 This order summarizes the statements made during the conference call. A more
`detailed record may be found in the transcript.
`3 All references to the papers refer to the three proceedings in numerical order; i.e.,
`the first paper number refers to the paper number in IPR2013-00428, the second
`paper number refers to the paper number in IPR2013-00429, and the third paper
`number refers to the paper number in IPR2013-00430.
`
`
`
`2
`
`

`

`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`
`III. Motions List
`
`Petitioner did not file a proposed motions list.
`
`Patent Owner’s List of Anticipated Proposed Motions, (Papers 15, 13 and
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`14), identified a possible contingent motion to amend under 37 C.F.R. § 42.121,
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`one or more of the challenged claims of the challenged patents. In connection with
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`that contingent motion, Patent Owner inquired whether the claim listing required
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`by 37 C.F.R. § 42.121(b) would be counted against the 15-page limit for a motion,
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`or whether the claim listing may be submitted as an attachment to the motion.
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`Specifically, Patent Owner inquired whether the claim listing may be submitted as
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`an “appendix” to the motion. Patent Owner was advised that claims may not be set
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`forth in an appendix, and thus the claim listing is counted against the 15-page limit
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`for a motion. The Board further advised Patent Owner of the requirement to confer
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`with the Board prior to filing such motion to amend, and at that time, Patent Owner
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`should provide a good reason why it requires additional pages to support the
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`motion. See 37 C.F.R. § 42.121(a).4 As issues arise, the parties may contact the
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`Board to discuss the filing of any additional motions.
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`Patent Owner’s List also identified a Motion requesting Pro Hac Vice
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`Admission of Adam L. Perlman (Papers 13, 11 and 12), which motion was
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`unopposed and granted in the Board’s Order of February 3, 2014 (Papers 18, 16
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`and 17).
`
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`4 Additional guidance on motions to amend is provided in the Board’s Trial
`Practice Guide and recent decisions, including Case IPR2012-00005, Paper 27,
`dated June 3, 2013, and Case IPR2012-00027, Paper 26, dated June 11, 2013 (“Idle
`Free”). For example, Idle Free explains that “in the absence of special
`circumstance, a challenged claim can be replaced by only one claim, and a motion
`to amend should, for each proposed substitute claim, specifically identify the
`challenged claim which it is intended to replace.” Idle Free at 5.
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`
`
`3
`
`

`

`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
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`During the conference, Patent Owner indicated that it had no opposition to
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`Petitioner’s pending Motion requesting Pro Hac Vice Admission of Paul A.
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`Ainsworth (Papers 16, 14 and 15). The ruling on the Ainsworth Motion will be set
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`forth in a separate order.
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`IV. Protective Order
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`The parties are reminded that there is currently no protective order in place
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`in the instant proceeding.
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`
`
`
`
`For PETITIONER:
`
`Eldora L. Ellison
`Ralph W. Powers, III
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`(202) 371-2600
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Stanley E. Fisher
`Williams & Connolly LLP
`(202) 434-5289
`sfisher@wc.com
`
`
`
`4
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`