Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Entered: May 1, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`Petitioner,
`
`
`
`
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2018-00001
`Patent 9,539,268 B2
`____________
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`571-272-7822
`
`Paper 17
`Entered: May 1, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`Petitioner,
`
`
`
`
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2018-00001
`Patent 9,539,268 B2
`____________
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`PGR2018-00001
`Patent 9,539,268 B2
`
`
`The Appendix to 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). 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 addition, even if the parties stipulate to an extension of DUE DATE 4,
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`any request for oral hearing must still be filed on or before the date set forth in this
`
`Order, to provide sufficient time for the Board to accommodate the hearing. Due
`
`to scheduling constraints, such as hearing room availability, the parties must
`
`request a conference call with the panel if there are any conflicts that arise with
`
`DUE DATE 7 as soon as practicable, which will be modified only upon a
`
`showing of good cause
`
`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 D, 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
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` 2
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`
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`PGR2018-00001
`Patent 9,539,268 B2
`
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`levied on a person who impedes, delays, or frustrates the fair examination of a
`
`witness.
`
`A. 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 Order or proposed motions. See
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14,
`
`2012) (guidance in preparing for the initial conference call).
`
`B. PROTECTIVE ORDER
`
`1. Confidential Information
`
`The parties must file confidential information using the appropriate
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`availability indicator in PTAB E2E, regardless of whose confidential information it
`
`is. It is the responsibility of the party whose confidential information is at issue,
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`not necessarily the proffering party, to file the motion to seal.
`
`A protective order does not exist in a case until one is filed in the case and is
`
`approved by the Board. If a motion to seal is filed by either party, the proposed
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`protective order should be presented as an exhibit to the motion. The motion to
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`seal must include a certification that the moving party has in good faith conferred
`
`or attempted to confer with other affected parties in an effort to resolve any
`
`dispute. See 37 C.F.R. 42.54(a).
`
`The parties are urged to operate under the Board’s default protective order,
`
`should that become necessary. See Default Protective Order, Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. at 48,769–71, App. B.
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`If the parties choose to propose a protective order deviating from the default
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`protective order, they should submit the proposed protective order jointly. A
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`PGR2018-00001
`Patent 9,539,268 B2
`
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`marked-up comparison of the proposed and default protective orders should be
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`presented as an additional exhibit to the motion to seal, so that differences can be
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`understood readily. The parties should contact the Board if they cannot agree on
`
`the terms of the proposed protective order.
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`2. Redactions
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`Redactions should be limited strictly to isolated passages consisting entirely
`
`of confidential information. The thrust of the underlying argument or evidence
`
`must be clearly discernable from the redacted version.
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`3. Confidential Information in Final Written Decisions
`
`Information subject to a protective order will become public if identified in a
`
`final written decision in this proceeding. A motion to expunge the information will
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`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.
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`C. DUE DATES
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`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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
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`deemed waived.
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`
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`PGR2018-00001
`Patent 9,539,268 B2
`
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`2. DUE DATE 2
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`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
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`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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`4. DUE DATE 4
`
`a.
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`Each party must file any observations on the cross-examination
`
`testimony of a reply witness (see section E, 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.
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`c. Each party must file any request for oral argument (37 C.F.R.
`
`§ 42.70(a)) by DUE DATE 4. As noted above, DUE DATE 4 is not extendible
`
`with respect to any request for oral argument.
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`5. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude evidence
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`by DUE DATE 5.
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by DUE
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`DATE 6.
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`PGR2018-00001
`Patent 9,539,268 B2
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE DATE 7.
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`D. CROSS-EXAMINATION
`
`Except as the parties might otherwise agree, for each due date—
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`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.
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`E. 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. at 48,768 (Aug. 14, 2012). 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.
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`F. MOTION TO AMEND
`
`
`
`Although the filing of a Motion to Amend is authorized under our Rules, the
`
`patent owner must confer with the Board before filing any Motion to Amend. See
`
`37 C.F.R. § 42.121(a). A conference call to satisfy the requirement of 37 C.F.R.
`
`§ 42.121(a) must be scheduled no less than ten (10) business days prior to DUE
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` 6
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`DATE 1.
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`PGR2018-00001
`Patent 9,539,268 B2
`
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`G. DEPOSITIONS
`
`The parties are advised 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.
`
`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 to portions of the
`
`transcript shall cite to the first-filed exhibit rather than submitting another copy of
`
`the same transcript.
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`H. COMMUNICATIONS WITH THE BOARD
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`Except as otherwise provided in the Rules, Board authorization is required
`
`before filing a motion. 37 C.F.R. § 42.20(b). A party seeking to file a non-
`
`preauthorized motion should request a conference to obtain authorization to file the
`
`motion. Parties may request a conference with us by contacting the Board staff by
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`e-mail at Trials@uspto.gov or by telephone at 571-272-7822.
`
`Regarding discovery disputes, the parties are encouraged to resolve such
`
`issues 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 relating to
`
`discovery, the parties should meet and confer to resolve such a dispute before
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`PGR2018-00001
`Patent 9,539,268 B2
`
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`contacting the Board. If attempts to resolve the dispute fail, a party may request a
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`conference call with the Board and the other party to discuss the issue and, if
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`necessary, seek authorization to file a motion in that regard. An email requesting a
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`conference call shall: (a) copy the other party, (b) indicate generally the subject
`
`matter of the conference call and relief requested, (c) state whether the opposing
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`party opposes the request, and (d) include multiple times when all parties are
`
`available for a conference. The email shall not contain substantive argument.
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`If the parties request a conference call, including an initial conference call,
`
`the parties must follow these procedures:
`
`a. Prior to requesting a conference call, the parties must confer in an
`
`effort to resolve any issue to be discussed with the Board, or be
`
`prepared to explain to the Board why such a conference was not
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`possible.
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`b. Parties may request a conference call by contacting the Board at the
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`email address or telephone number listed above the caption of this
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`Order. Requests via email are expected and preferred; requests via
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`telephone should be reserved for time-critical circumstances.
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`Requests by email must copy opposing counsel. Requests by
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`telephone should include opposing counsel as practicable.
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`c. The request must include a list of proposed issues and/or motions to
`
`be discussed during the call.
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`d. The request may include a brief background discussion of the issue(s)
`
`and/or motion(s) to be discussed, but must not include arguments.
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`PGR2018-00001
`Patent 9,539,268 B2
`
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`e. The request must certify that the parties conferred in accordance with
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`2.a., and must indicate the result of the conference (e.g., whether the
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`non-requesting party opposes or does not oppose the request).
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`f. The request must include a list of dates and times when both parties
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`are available for the call.
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`PGR2018-00001
`Patent 9,539,268 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................... August 1, 2018
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... November 1, 2018
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ...................................................................... December 3, 2018
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 .................................................................... December 28, 2018
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`Observations regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ......................................................................... January 11, 2019
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`Response to observations
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`Opposition to motion to exclude
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`DUE DATE 6 ....................................................................... January 18, 2019
`Reply to opposition to motion to exclude
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`DUE DATE 7 ....................................................................... February 7, 2019
`Oral argument (if requested).
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`10
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`PGR2018-00001
`Patent 9,539,268 B2
`
`
`PETITIONER:
`
`Bruce Haas
`grunenthalpgr@fchs.com
`
`syam@fchs.com
`
`PATENT OWNER:
`
`Brent Johnson
`bjohnson@mabr.com
`
`Parrish Freeman
`pfreeman@mabr.com
`
`
`
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`11
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