Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 16
`Entered: March 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC XOMED, INC.,
`Petitioner,
`
`v.
`
`NEUROVISION MEDICAL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01847
`Patent 8,467,844 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, WILLIAM V. SAINDON, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 16
`Entered: March 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDTRONIC XOMED, INC.,
`Petitioner,
`
`v.
`
`NEUROVISION MEDICAL PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01847
`Patent 8,467,844 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, WILLIAM V. SAINDON, and
`RICHARD E. RICE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`IPR2016-01847
`Patent 8,467,844 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 filed promptly. 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.
`
`INITIAL CONFERENCE CALL
`1.
`An initial conference call has not been scheduled at this time. 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
`
`
`
`IPR2016-01847
`Patent 8,467,844 B2
`
`
`DUE DATE 1
`2.
`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).
`Patent Owner must file any such response or motion to amend by
`DUE DATE 1. If Patent Owner elects not to file anything, 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
`will be deemed waived.
`
`DUE DATE 2
`3.
`Petitioner must file any reply to Patent Owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`
`DUE DATE 3
`4.
`Patent Owner must file any reply to 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.
`
`3
`
`
`
`IPR2016-01847
`Patent 8,467,844 B2
`
`
`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.
`
`DUE DATE 6
`7.
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`DUE DATE 7
`8.
`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
`
`4
`
`
`
`IPR2016-01847
`Patent 8,467,844 B2
`
`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.
`
`D. MOTION 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/ip/boards/bpai/representative_orders_and_opinions.jsp.
`
`
`5
`
`
`
`IPR2016-01847
`Patent 8,467,844 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ June 21, 2017
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. September 13, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... October 11, 2017
`Patent Owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................... November 1, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................. November 15, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. November 22, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ..................................................................... December 6, 2017
`Oral argument (if requested)
`
`
`
`
`
`6
`
`
`
`IPR2016-01847
`Patent 8,467,844 B2
`
`PETITIONER:
`
`Justin Oliver
`Jason Dorsky
`FITZPATRICK, CELLA, HARPER & SCINTO
`Medtronic894IPR@fchs.com
`jdorsky@fchs.com
`
`
`
`PATENT OWNER:
`
`Neil A. Rubin
`C. Jay Chung
`Kent N. Shum
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`kshum@raklaw.com
`
`
`7
`
`
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