Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 18
`Entered: February 9, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`Patent Owner.
`
`Case IPR2016-01565
`Patent 8,853,156 B2
`
`
`
`
`Before TONI R. SCHEINER, BRIAN P. MURPHY, and ZHENYU YANG,
`Administrative Patent Judges.
`
`
`SCHEINER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`Tel: 571-272-7822
`
`Paper 18
`Entered: February 9, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`Patent Owner.
`
`Case IPR2016-01565
`Patent 8,853,156 B2
`
`
`
`
`Before TONI R. SCHEINER, BRIAN P. MURPHY, and ZHENYU YANG,
`Administrative Patent Judges.
`
`
`SCHEINER, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`A. GENERAL INSTRUCTIONS
`1.
`Initial Conference Call
`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions that have not been authorized in this Order or other
`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
`preparing for the initial conference call). A request for an initial conference
`call shall include a list of proposed motions, if any, to be discussed during
`the call.
`Protective Order
`2.
`A Motion to Seal and an Appendix containing a jointly proposed
`Default Protective Order has been filed in this proceeding (Paper 10). Please
`note that the protective order should be filed as an exhibit. As explained in
`the accompanying Decision of Institution, although we reserve ruling on the
`Motion to Seal and entry of the Default Protective Order, Exhibits 2010–
`2015 will remain under seal in the interim. Should the parties subsequently
`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 trial
`proceedings. Redactions to documents filed in this proceeding should be
`limited to the minimum amount necessary to protect confidential
`information, and the thrust of the underlying argument or evidence must be
`clearly discernible from the redacted versions. We also advise the parties
`
`2
`
`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`that information subject to a protective order may become public if
`identified in a final 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 Practice
`Guide, at 48,761.
`3.
`Discovery Disputes
`The Board encourages parties to resolve disputes relating to discovery
`on their own. To the extent that a dispute arises between the parties relating
`to discovery, the parties must 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.
`4.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, 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.
`5.
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(2).
`Cross-examination ordinarily 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.
`
`3
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`
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`IPR2016-01565
`Patent 8,853,156 B2
`
`Observations on Cross-Examination
`6.
`Observations on cross-examination provide 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 Trial 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 must not exceed a single, short paragraph. The
`opposing party may respond to the observation. Any response must be
`equally concise and specific. Observations and responses are each limited to
`10 pages or less.
`7.
`Oral Argument
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Due Date Appendix.
`Oral argument, if requested, will be held at the USPTO headquarters
`in Alexandria, Virginia.
`Seating in the Board’s hearing rooms may be limited and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals, including counsel, will attend the argument
`on its behalf, the party should notify the Board as soon as possible and no
`later than the request for oral argument. Parties should note that the earlier a
`request for accommodation is made, the more likely the Board will be able
`to accommodate additional individuals.
`
`
`4
`
`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`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 filed promptly. The parties may not stipulate to an extension of DUE
`DATES 6 and 7, or to the date for requesting oral argument.
`When 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
`Patent Owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120). If Patent
`Owner elects not to file a response, Patent Owner must arrange a conference
`call with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.
`A motion to amend the patent (37 C.F.R. § 42.121). Patent
`b.
`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. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent
`Owner should request a conference call with the Board no later than two
`weeks prior to DUE DATE 1. The parties are directed to the Board’s Web
`site for precedential, informative, and representative decisions relating to
`
`5
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`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`motions to amend among other topics. The parties may access these
`decisions at: http://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/decisions.
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response and an
`opposition to the motion to amend.
`3. DUE DATE 3
`Patent Owner may file a reply to Petitioner’s opposition to Patent
`Owner’s motion to amend.
`4. DUE DATE 4
`Either party may file—
`a.
`Observations on the cross-examination testimony of the
`opposing party’s reply witnesses.
`b.
`A motion to exclude evidence (37 C.F.R § 42.64(c)).
`5. DUE DATE 5
`Either party may file—
`a.
`A response to the opposing party’s observations on cross-
`examination testimony.
`b.
`An opposition to a motion to exclude evidence.
`6. DUE DATE 6
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`7. DUE DATE 7
`The oral argument (if requested by either party) shall be held on this
`date. Approximately one month prior to the argument, the Board will issue
`
`6
`
`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`an order setting the start time of the hearing and the procedures that will
`govern the parties’ arguments.
`
`
`
`
`
`
`7
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`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`
`DUE DATE APPENDIX
`DUE DATE 1 ........................................................................... April 14, 2017
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend claims
`
`DUE DATE 2 ............................................................................ June 28, 2017
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. July 19, 2017
`Patent Owner’s reply to Petitioner’s opposition to motion to amend
`
`DUE DATE 4 .......................................................................... August 9, 2017
`Observations regarding cross-examination of reply witnesses
`Motion to exclude evidence
`
`REQUEST FOR ORAL ARGUMENT ................................... August 9, 2017
`
`DUE DATE 5 ........................................................................ August 23, 2017
`Response to observations
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................ August 30, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .................................................................. September 22, 2017
`Oral argument (if requested)
`
`
`8
`
`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`
`
`FOR PETITIONER:
`
`Thomas Parker
`thomas.parker@alston.com
`
`Chris McArdle
`chris.mcardle@alston.com
`
`Ellen Cheong
`ellen.cheong@alston.com
`
`Charles Naggar
`charles.naggar@alston.com
`
`
`FOR PATENT OWNER:
`
`Leora Ben-Ami
`leora.benami@kirkland.com
`
`Eugene Goryunov
`egoryunov@kirkland.com
`
`Mira Mulvaney
`mira.mulvaney@kirkland.com
`
`Jeanna Wacker
`jeanna.wacker@kirkland.com
`
`
`
`
`
`
`9
`
`
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