Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 26
`Entered: June 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`
`
`Cases
`IPR2018-00297 (Patent RE45,553 E)
`IPR2018-00298 (Patent RE45,386 E)
` IPR2018-00299 (Patent 7,230,232 B2)
` IPR2018-00313 (Patent RE45,386 E)1
`
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`1 This Scheduling Order sets due dates that are identical for all four cases.
`We, therefore, exercise our discretion to issue one Scheduling Order to be
`filed in each case. The parties are not authorized to use this style heading
`for any subsequent papers.
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 26
`Entered: June 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`
`
`Cases
`IPR2018-00297 (Patent RE45,553 E)
`IPR2018-00298 (Patent RE45,386 E)
` IPR2018-00299 (Patent 7,230,232 B2)
` IPR2018-00313 (Patent RE45,386 E)1
`
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`1 This Scheduling Order sets due dates that are identical for all four cases.
`We, therefore, exercise our discretion to issue one Scheduling Order to be
`filed in each case. The parties are not authorized to use this style heading
`for any subsequent papers.
`
`
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`A. DUE DATES
`This order sets due dates for the parties to take action after institution
`of these proceedings. The parties may stipulate to different dates for DUE
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6).2 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 these proceedings. 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 ten (10) business
`days of the entry date of this Scheduling Order if there is a need to discuss
`proposed changes to the due dates set forth herein or proposed motions. See
`
`
`2 The parties may not change DUE DATE 4 with respect to the requirement
`for requesting oral argument, without prior authorization from the panel.
`
`2
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug.
`14, 2012) (setting forth 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
`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.
`
`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 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
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`6. DUE DATE 5
`a.
`Each party must file any response to any observations 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.
`
`7. DUE DATE 6
`Each party must file any reply to any opposition to 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. OBSERVATIONS ON CROSS-EXAMINATION
`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 Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,768 (Aug. 14, 2012). No new evidence of any kind may be
`
`4
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`introduced with an observation, without prior authorization from the panel.
`An 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.
`
`D. MOTION TO AMEND
`Although the filing of a Motion to Amend is authorized under our
`rules, Patent Owner must confer with us before filing any Motion to Amend.
`37 C.F.R. § 42.121(a). Patent Owner should contact the Board to request
`such a conference, if necessary, at least ten (10) business days before DUE
`DATE 1.
`
`
`
`
`5
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ...................................................... Optional
`
`DUE DATE 1 ................................................................... September 18, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................... December 18, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ........................................................................ January 18, 2019
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................ February 8, 2019
`Observations regarding cross-examination of reply witness
`Motions to exclude evidence
`Requests for oral argument3
`
`DUE DATE 5 ...................................................................... February 22, 2019
`Responses to observations
`Oppositions to motions to exclude evidence
`
`DUE DATE 6 ............................................................................ March 1, 2019
`Replies to oppositions to motions to exclude
`
`
`3 Although the parties may stipulate to a different date for DUE DATE 4
`regarding the “Observations regarding cross-examination of reply witness”
`and “Motions to exclude evidence,” the parties may not stipulate to a
`different date for the filing of “Requests for oral argument.”
`
`6
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`DUE DATE 7 .......................................................................... March 13, 2019
`Oral argument (if requested)
`
`
`7
`
`
`
`IPR2018-00297 (Patent RE45,553 E) IPR2018-00298 (Patent RE45,386 E)
`IPR2018-00299 (Patent 7,230,232 B2) IPR2018-00313 (Patent RE45,386 E)
`
`For PETITIONER:
`Brian M. Buroker
`Mark N. Reiter
`David L. Glandorf
`Anne Y. Brody
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`mreiter@gibsondunn.com
`dglandorf@gibsondunn.com
`abrody@gibsondunn.com
`
`
`For PATENT OWNER:
`
`Adam R. Brausa
`Sonal N. Mehta
`Eneda Hoxha
`Durie Tangri LLP
`abrausa@durietangri.com
`smehta@durietangri.com
`ehoxha@durietangri.com
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
