Trials@uspto.gov
`571-272-7822
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`
`
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`
`
`
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` Paper 11
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`
`
` Entered: February 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC. and APOTEX CORP.,
`Petitioners
`
`v.
`
`AMGEN INC. and AMGEN MANUFACTURING LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-01542
`Patent 8,952,138 B2
`____________
`
`
`
`Before JAMES T. MOORE, MICHAEL J. FITZPATRICK, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`CASE MANAGEMENT
`AND
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 11
`
`
`
` Entered: February 17, 2017
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC. and APOTEX CORP.,
`Petitioners
`
`v.
`
`AMGEN INC. and AMGEN MANUFACTURING LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-01542
`Patent 8,952,138 B2
`____________
`
`
`
`Before JAMES T. MOORE, MICHAEL J. FITZPATRICK, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`CASE MANAGEMENT
`AND
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2016-01542
`Patent 8,952,138 B2
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`Unless at least one of the parties requests otherwise, we will not
`conduct an initial conference call as described in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (“Practice
`Guide”). In lieu of such a call, we instruct the parties as follows:
`(1) If a party wishes to request an initial conference call, that party
`shall request the call no later than 25 days after the institution of
`trial;
`(2) A request for a conference call shall include: (a) a list of proposed
`motions, if any, to be discussed during the call and (b) a list of
`dates and times when the parties are available for the call; and
`(3) The parties shall be prepared to discuss during the initial
`conference call their concerns, if any, relating to the schedule in
`this proceeding as set forth below.
`Absent good cause shown, we will not conduct an initial conference
`call later than 30 days after the institution of a trial.
`2. Protective Order
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. If a protective order is desired, 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,
`Practice Guide, App. B. If the parties choose to propose a protective order
`deviating from the default protective order, they must submit the proposed
`
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`IPR2016-01542
`Patent 8,952,138 B2
`
`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 in public versions of
`documents filed under seal 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 public versions. We also advise the parties that sealed information
`will become public if identified in a final written decision in this proceeding,
`and that a motion to expunge the sealed information will not necessarily
`prevail over the public interest in maintaining a complete and
`understandable file history. See Practice Guide, at 48,761.
`3. Motions to Amend
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, the Patent Owner must confer with the Board
`as required under 37 C.F.R. § 42.121(a) no later than ten (10) business days
`before DUE DATE 1. We direct the parties’ attention to the Board’s
`precedential decision relating to Motions to Amend in MasterImage 3D, Inc.
`v. RealD Inc., IPR2015-00040, Paper 42, which is accessible at:
`https://www.uspto.gov/sites/default/files/documents/MasterImage%203D%20
`v%20RealD%20IPR2015-00040_Paper%2042.pdf. We also 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: https://www.uspto.gov/patents-application-process/appealing-
`patent-decisions/decisions-and-opinions/representative-orders.
`3
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`IPR2016-01542
`Patent 8,952,138 B2
`
`
`4. Dispute Resolution During Trial
`The Panel encourages parties to resolve disputes arising during the
`trial 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, we order
`the parties to meet and confer to resolve their 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
`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; 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
`Practice Guide, App. 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
`4
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`IPR2016-01542
`Patent 8,952,138 B2
`
`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. See Practice Guide, at 48,768. 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
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`IPR2016-01542
`Patent 8,952,138 B2
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`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).
`
`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.
`
`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.
`
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`IPR2016-01542
`Patent 8,952,138 B2
`
`
`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 III, below) by
`DUE DATE 4.
`b.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) by DUE DATE 4.
`c.
`Each party must file 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 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.
`
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`A. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`
`
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`IPR2016-01542
`Patent 8,952,138 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ May 22, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ August 21, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. September 21, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ..................................................................... October 12, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ...................................................................... October 26, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... November 2, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ................................................................... December 13, 2017
`Oral argument (if requested)
`
`
`
`8
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`IPR2016-01542
`Patent 8,952,138 B2
`
`PETITIONER:
`
`Teresa Rea
`trea@crowell.com
`
`Deborah Yellin
`dyellin@crowell.com
`
`Vincent Galluzzo
`vgalluzzo@crowell.com
`
`
`PATENT OWNER:
`
`Arlene Chow
`Arlene.chow@hoganlovells.com
`
`Catherine Nyarady
`cnyarady@paulweiss.com
`
`9
`
`
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