`571-272-7822
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`Paper No. 8
`Entered: October 16, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`U.S. ENDOSCOPY GROUP, INC.,
`Petitioner,
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`v.
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`CDX DIAGNOSTICS, INC. and
`SHARED MEDICAL RESOURCES, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00642
`Patent 6,258,044 B1
`____________
`
`Before PHILLIP J. KAUFFMAN, SCOTT E. KAMHOLZ, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
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`KAMHOLZ, Administrative Patent Judge.
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`A. Due Dates
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`SCHEDULING ORDER
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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 6 (earlier or later, but no later than the date set herein for
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`IPR2014-00642
`Patent 6,258,044 B1
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`DUE DATE 6). A notice of the stipulation, specifically identifying the
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`changed due dates, must be filed with the Board prior to any filing that
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`depends on the stipulation for timeliness. The parties may not stipulate to a
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`change of DUE DATE 7.
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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-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see section B, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the 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. 37
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`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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`1. Initial conference call
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`No initial conference call is scheduled for this case. The parties are
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`encouraged to contact the Board to request a call if any issues arise during
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`trial.
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`2. Motion to Amend conference
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`The Patent Owner is reminded that it must confer with the Board
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`before filing a Motion to Amend. 37 C.F.R. § 42.121(a). Patent Owner
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`should contact the Board to request the conference in sufficient time to
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`IPR2014-00642
`Patent 6,258,044 B1
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`ensure that the conference is conducted at least one week before DUE
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`DATE 1.
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`3. 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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`4. 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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`5. 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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`6. Due Date 4
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`a.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below) by
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`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
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`DUE DATE 4.
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`IPR2014-00642
`Patent 6,258,044 B1
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`7. Due Date 5
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`a.
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`Each party must file any response to an observation on cross-
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`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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`8. 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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`9. 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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`B. Cross-Examination
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`Except as the parties might otherwise agree, for each due date—
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`1.
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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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`2.
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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
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`be used. Id.
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`C. Motion for Observation on Cross-Examination
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
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`concise statement of the relevance of precisely identified testimony to a
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`precisely identified argument or portion of an exhibit. Each observation
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`should not exceed a single, short paragraph. The opposing party may
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`respond to the observation. Any response must be equally concise and
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`specific.
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`IPR2014-00642
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ............................................. not scheduled
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`DUE DATE 1 ............................................................................. Dec 23, 2014
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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 ............................................................................... Mar 2, 2015
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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 ............................................................................... Apr 2, 2015
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 .............................................................................. Apr 23, 2015
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`Motion for observation 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 .............................................................................. May 7, 2015
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ............................................................................ May 14, 2015
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ............................................................................ May 21, 2015
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`Oral argument (if requested)
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`IPR2014-00642
`Patent 6,258,044 B1
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`For Petitioner:
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`Todd. R. Tucker
`Mark W. McDougall
`CALFEE, HALTER & GRISWOLD LLP
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`For Patent Owner:
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`Peter L. Berger
`Tuvia Rotberg
`LEVISOHN BERGER LLP
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