Paper 12
`Date: March 7, 2016
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`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBUS MEDICAL, INC.,
`Petitioner,
`
`v.
`
`FLEXUSPINE, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01795
`Patent 8,647,386 B2
`____________
`
`Before WILLIAM V. SAINDON, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`Date: March 7, 2016
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBUS MEDICAL, INC.,
`Petitioner,
`
`v.
`
`FLEXUSPINE, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01795
`Patent 8,647,386 B2
`____________
`
`Before WILLIAM V. SAINDON, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2015-01795
`Patent 8,647,386 B2
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`Either party may request an initial conference call within 30 days of this
`Scheduling Order. The request for a conference call should include a list of dates
`and times when the parties are available for the call. If an initial conference call is
`requested, the parties should be prepared to discuss any proposed changes to this
`Scheduling Order and any motions the parties anticipate filing during the trial. The
`parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,765–66 (Aug. 14, 2012) for guidance in preparing for an initial conference call
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties file
`one and the Board approves it. If either party files a motion to seal before entry of
`a protective order, a jointly proposed protective order should be presented as an
`exhibit to the motion. We encourage the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See Default
`Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B
`(Aug. 14, 2012). 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.
`The Board has a strong interest in the public availability of the proceedings.
`We advise the parties that redactions to documents filed in this proceeding should
`be limited strictly to isolated passages consisting entirely of confidential
`information, and that 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 will become public if identified in a final
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`IPR2015-01795
`Patent 8,647,386 B2
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`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 Office Patent Trial Practice Guide, 77 Fed. Reg. at
`48,761.
`3. Motions 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. See 37 C.F.R. § 42.121(a). Patent Owner should arrange for a conference
`call with the panel and opposing counsel at least one week before DUE DATE 1 in
`order to satisfy the conferral requirement. We direct the parties to the Board’s
`website for representative decisions relating to Motions to Amend among other
`topics. The parties may access these representative decisions at:
`http://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/decisions-and-opinions/representative-orders.
`4. Discovery Disputes
`The panel encourages parties to resolve disputes relating to discovery on
`their own and in accordance with the precepts set forth in 37 C.F.R. § 42.1(b). To
`the extent that a dispute arises between the parties relating to discovery, the parties
`shall 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 and the other party in order to seek authorization to move for relief.
`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;
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`IPR2015-01795
`Patent 8,647,386 B2
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`and (d) propose specific dates and times at which both parties are available for the
`conference call.
`5. Depositions
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012)
`(Appendix D), 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.
`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—
`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.
`7. Motion for Observation on Cross-Examination
`A motion for observation on cross-examination provides the parties with a
`mechanism to draw the Board’s attention to relevant cross-examination testimony
`of a reply witness because no further substantive paper is permitted after the reply.
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`IPR2015-01795
`Patent 8,647,386 B2
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012). 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 opposing party
`may respond to the observation. Any response must be equally concise and
`specific.
`
`
`
`B. DUE DATES
`This order sets due dates for the parties to take action after institution of the
`proceeding. The parties may stipulate to 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 to an extension of DUE DATES 6 and 7.
`In stipulating to 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 (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.
`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`1. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`b.
`A motion to amend the patent (37 C.F.R. § 42.121).
`The patent owner must file any such response or motion to amend by DUE
`DATE 1. If the patent owner elects not to file anything, the patent owner must
`arrange a conference call with the parties and the Board. The patent owner is
`cautioned that any arguments for patentability not raised in the response will be
`deemed waived.
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`IPR2015-01795
`Patent 8,647,386 B2
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`2. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`3. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to patent
`owner’s motion to amend by DUE DATE 3.
`4. DUE DATE 4
`a.
`Each party must file any motion for an observation on the cross-
`examination testimony of a reply witness (see section A.7, above) by DUE
`DATE 4.
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE
`DATE 4.
`5. DUE DATE 5
`a.
`Each party must file any reply to a petitioner observation on cross-
`examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to exclude evidence
`by DUE DATE 5.
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
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`IPR2015-01795
`Patent 8,647,386 B2
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`DUE DATE APPENDIX
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`
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`DUE DATE 1 ............................................................................. May 24, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... August 24, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................... September 26, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ....................................................................... October 13, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ....................................................................... October 27, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ..................................................................... November 3, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ................................................................... November 16, 2016
`Oral argument (if requested)
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`IPR2015-01795
`Patent 8,647,386 B2
`
`PETITIONER:
`George Moustakas
`David Utykanski
`gdmoustakas@hdp.com
`dutykanski@hdp.com
`
`PATENT OWNER:
`Brett M. Pinkus
`FRIEDMAN, SUDER & COOKE
`pinkus@fsclaw.com
`
`Jonathan T. Suder
`(pro hac vice motion pending)
`FRIEDMAN, SUDER & COOKE
`jts@fsclaw.com
`
`Mark D. Strachan
`(pro hac vice motion pending)
`SAYLES│WERBNER, P.C.
`mstrachan@swtriallaw.com
`
`hermesch@fsclaw.com
`dunn@fsclaw.com
`
`
`
`8
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