`Tel: 571-272-7822
`
`Paper 10
`Entered: June 29, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EDWARDS LIFESCIENCES CORPORATION,
`Petitioner,
`
`v.
`
`BOSTON SCIENTIFIC SCIMED, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00444
`Patent 6,915,560 B2
`____________
`
`
`Before NEIL T. POWELL, JAMES A. TARTAL, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`CASE MANAGEMENT
`AND SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-00444
`Patent 6,915,560 B2
`
`A. GENERAL INSTRUCTIONS
`Requests for an Initial Conference Call
`1.
`An initial conference call is not scheduled in this case. A party may
`request an initial conference call within twenty-five (25) days after the
`institution of trial. A party requesting an initial conference call shall:
`(a) identify the proposed motions, if any, to be discussed during the call; and
`(b) propose two or more dates and times when both parties are available for
`the call. When an initial conference call is scheduled in response to a
`request, 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 the initial conference call and should be prepared to discuss any
`proposed changes to the schedule in this proceeding.
`
`Protective Order
`2.
`A protective order will not be entered in this proceeding unless the
`parties file one and the Board approves it. If a protective order is necessary,
`the parties are encouraged to adopt the Board’s Default Protective Order
`appended to the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,771
`(Appendix B). If the parties choose to propose a protective order deviating
`from the default protective order, they must submit the proposed protective
`order along with a marked-up comparison of the proposed and default
`protective orders showing the differences. If either party files a motion to
`seal before entry of a protective order, a proposed protective order should be
`presented as an exhibit to the motion that has been discussed with the
`opposing party and, preferably, be jointly proposed. If the protective order
`is not jointly proposed, the proponent of the order should identify where the
`parties differ in the proposed language of the order.
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`IPR2017-00444
`Patent 6,915,560 B2
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`The Board has a strong interest in promoting public accessibility to
`the proceedings. If a party seeks to redact information from documents filed
`in this proceeding in accordance with a protective order, the redactions must
`be limited to isolated passages consisting entirely of confidential
`information, and the thrust of the underlying argument or evidence must
`remain clearly discernible.
`Information subject to a protective order will nevertheless become
`public if identified in a final written decision in this proceeding. A motion
`to expunge information subject to a protective order will not prevail
`necessarily over the public interest in maintaining a complete and
`understandable file history. See Office Patent Trial Practice Guide,
`77 Fed. Reg. at 48,761.
`
`Depositions
`3.
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772 (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 shall cite to the filed
`exhibit rather than submitting another copy of the same transcript.
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`IPR2017-00444
`Patent 6,915,560 B2
`Discovery Disputes
`4.
`Parties are encouraged to resolve disputes relating to discovery on
`their own and in accordance with the precepts of securing a just, speedy, and
`inexpensive resolution, as 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) confirm that it has
`conferred in good faith with the other party in an effort to resolve the
`dispute; (b) identify with specificity the issues for which agreement has not
`been reached, but refrain from arguing the merits of the request; (c) identify
`the precise relief to be sought; and (d) propose two or more dates and times
`when both parties are available for the call.
`
`5. 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. 37 C.F.R. § 42.121(a). The parties are directed
`to the Board’s website for representative decisions relating to Motions to
`Amend, among other topics, available at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`
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`IPR2017-00444
`Patent 6,915,560 B2
`Cross-Examination
`6.
`Except as the parties might otherwise agree, for each due date—
`a.
`Cross-examination begins after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(2).
`b.
`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 Office Patent Trial Practice Guide,
`77 Fed. Reg. 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.
`
`8. Motion for Pro Hac Vice Admission
`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause. 37 C.F.R. § 42.10(c). The parties are
`authorized in the Notice of Filing Date Accorded to Petition to file motions
`for pro hac vice admission. A pro hac vice motion may be filed no sooner
`than twenty-one (21) days after service of the petition, and any opposition
`must be filed no later than one week after the filing of the underlying
`motion. No reply to any opposition shall be filed unless further authorized.
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`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 dates, 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 A.6, above).
`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.
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`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
`b.
`C.F.R § 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 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.
`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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`IPR2017-00444
`Patent 6,915,560 B2
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`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................. September 22, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... December 15, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ....................................................................... January 19, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ....................................................................... February 9, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ..................................................................... February 23, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................... March 2, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ......................................................................... March 15, 2018
`Oral argument (if requested)
`
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`IPR2017-00444
`Patent 6,915,560 B2
`
`PETITIONER:
`
`Craig S. Summers
`2css@knobbe.com
`Brenton R. Babcock
`2brb@knobbe.com
`Christy G. Lea
`2cgl@knobbe.com
`Cheryl T. Burgess
`2ctb@knobbe.com
`
`
`PATENT OWNER:
`
`Wallace Wu
`Wallace.Wu@aporter.com
`Jennifer A. Sklenar
`Jennifer.Sklenar@aporter.com
`Nicholas Nyemah
`Nicholas.nyemah.aporter.com
`
`
`
`
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