Trials@uspto.gov
`571-272-7822
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` Paper No. 8
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` Entered: May 24, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` ADAMA MAKHTESHIM LTD.,
`Petitioner
`
`v.
`
`FINCHIMICA S.P.A.,
`Patent Owner.
`
`
`
`
`Case IPR2016-00577
`Patent 8,304,559 B2
`
`
`
`
`
`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and DEBORAH
`KATZ, Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`SCHEDULING ORDER
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`571-272-7822
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`
`
`
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`
`
`
`
`
`
`
`
`
` Paper No. 8
`
`
` Entered: May 24, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` ADAMA MAKHTESHIM LTD.,
`Petitioner
`
`v.
`
`FINCHIMICA S.P.A.,
`Patent Owner.
`
`
`
`
`Case IPR2016-00577
`Patent 8,304,559 B2
`
`
`
`
`
`Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and DEBORAH
`KATZ, Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`Case IPR2016-00577
`Patent 8,304,559 B2
`
`A. 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 (see section B, below).
`The parties are reminded 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.
`1. INITIAL CONFERENCE CALL
`The parties are directed to contact the Board within a month of this decision
`if there is a need to discuss proposed changes to this Scheduling Order or proposed
`motions. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66
`(Aug. 14, 2012) (guidance in preparing for the initial conference call).
`2. DUE DATE 1
`The patent owner may file—
`a. A response to the petition (37 C.F.R. § 42.120), and
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`2
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`Case IPR2016-00577
`Patent 8,304,559 B2
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`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. Patent Owner is reminded that it must confer with the Board before
`filing a Motion to Amend. 37 C.F.R. § 42.121(a). Patent Owner should contact the
`Board to request the conference in sufficient time to ensure that the conference is
`conducted at least one week before 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.
`3. 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.
`4. 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.
`5. DUE DATE 4
`a. Each party must file any motion for an observation on the cross-
`examination testimony of a reply witness (see section C, below) by DUE DATE 4.
`b. 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)) by DUE
`DATE 4.
`6. DUE DATE 5
`a. Each party must file any response to an 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.
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`3
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`Case IPR2016-00577
`Patent 8,304,559 B2
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`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
`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
`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.
`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.
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`4
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`Case IPR2016-00577
`Patent 8,304,559 B2
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`
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`PETITIONER:
`Gary Gershik
`ggershik@cooperdunham.com
`
`Norman Zivin
`nzivin@cooperdunham.com
`
`
`
`PATENT OWNER:
`Edward Figg
`efigg@rfem.com
`
`Robert Huntington
`dhuntington@rothwellfigg.com
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`5
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`Case IPR2016-00577
`Patent 8,304,559 B2
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`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL.............................................UPON REQUEST
`DUE DATE 1 ...........................................................................17 August 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2 ............................................................................09 November 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ..............................................................................07 December 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`DUE DATE 4 ..............................................................................21 December 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 .................................................................................05 January 2017
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 ...............................................................................19 January 2017
`Reply to opposition to motion to exclude
`DUE DATE 7 ...............................................................................16 February 2017
`Oral argument (if requested)
`
`
`
`6
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