Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 19
`Entered: October 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`COLLEGIUM PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`PURDUE PHARMA L.P., PURDUE PHARMACEUTICALS L.P.,
`AND THE P.F. LABORATORIES INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00048
`Patent 9,693,961 B2
`___________
`
`
`Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW,
`and KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 19
`Entered: October 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`COLLEGIUM PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`PURDUE PHARMA L.P., PURDUE PHARMACEUTICALS L.P.,
`AND THE P.F. LABORATORIES INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00048
`Patent 9,693,961 B2
`___________
`
`
`Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW,
`and KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`PGR2018-00048
`Patent 9,693,961 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.
`2. Standing Procedure for Requests for Conference Calls
`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 possible.
`b. Parties may request a conference call by contacting the Board at
`the email address or telephone number listed above the caption
`of this Order. Requests via email are expected and preferred;
`requests via telephone should be reserved for time-critical
`circumstances. Requests by email must copy opposing counsel.
`Requests by telephone should include opposing counsel as
`practicable.
`c. The request must include a concise list of proposed issues
`and/or motions to be discussed during the call. The parties
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`PGR2018-00048
`Patent 9,693,961 B2
`
`
`shall not include arguments in email communications to the
`Board.
`d. The request must certify that the parties conferred in
`accordance with section A.2.a. of this Order, and must indicate
`the result of the conference (e.g., whether the non-requesting
`party opposes or does not oppose the request).
`e. The request must include a list of dates and times when both
`parties are available for the call.
`f. The parties may arrange for a court reporter to be present on the
`conference call if necessary.
`3. Protective Order
`No protective order shall apply to this proceeding until the Board
`enters one. If either party files a motion to seal before entry of a protective
`order, a jointly proposed protective order shall be filed as an exhibit with the
`motion. The Board encourages the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See
`Practice Guide, App’x B (Default Protective Order). If the parties 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 between the two and explain why good cause exists to deviate
`from the default protective order.
`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
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`PGR2018-00048
`Patent 9,693,961 B2
`
`clearly discernible from the redacted versions. We also advise the parties
`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 48,761. e
`4. Motions to Seal
`A party intending a document or thing to be sealed shall file a motion
`to seal concurrent with the filing of the document or thing to be sealed.
`37 C.F.R. § 42.14. The moving party must also file the following as exhibits
`accompanying the motion:
`(a) A declaration establishing that the document or thing sought to be
`filed under seal is confidential.
`(b) If seeking to file a portion of a document under seal, a redacted
`version of the document must be filed publicly.
`(c) An unredacted version of the document must be filed
`confidentially (i.e., as available to the “Parties and Board Only”).
`The unredacted version must highlight or otherwise clearly
`indicate the portion(s) of the document that have been redacted in
`the redacted version.
`If the moving party is seeking to file under seal a document
`designated confidential by the opposing party pursuant to a protective order,
`the declaration in support of the motion to seal must identify the party that
`has designated the material as confidential (“the designating party”). Within
`five business days, the designating party must file a response to the motion
`
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`PGR2018-00048
`Patent 9,693,961 B2
`
`to seal and file a declaration as an exhibit that establishes the designated
`information is confidential.
`5. Discovery Disputes
`The panel encourages the parties to resolve disputes relating to
`discovery 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 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 in accordance with
`section A.2 of this Order to seek authorization to file a motion for relief.
`6. Testimony
`The parties are advised 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.
`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.
`7. Cross-Examination
`Except as the parties might otherwise agree, for each due date:
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`PGR2018-00048
`Patent 9,693,961 B2
`
`Cross-examination ordinarily takes place after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(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.
`
`8. 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. A pre-hearing
`conference call may be held at either party’s request and will generally occur
`no later than three business days prior to the oral hearing. To the extent it is
`deemed necessary, the parties shall request a pre-hearing call no later than
`five business days before the hearing. Prior to making such a request, the
`parties should meet and confer in accordance with section A.2 of this Order
`and send a joint request to the Board with an agreed-upon set of limited
`issues for discussion.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria. 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 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.
`
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`PGR2018-00048
`Patent 9,693,961 B2
`
`Parties should note that the earlier a request for accommodation is made, the
`more likely the Board will be able to accommodate additional individuals.
`9. Patent Owner’s Sur-Reply
`In lieu of a motion for observations on cross-examination, Patent
`Owner may file a substantive sur-reply by DUE DATE 3 to address
`arguments raised in Petitioner’s reply to the patent owner’s response. See
`Office Patent Trial Practice Guide Update, 14 (August 13, 2018), Available
`at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf.
`Patent Owner’s sur-reply may only respond to arguments raised in
`petitioner’s reply. Unless otherwise authorized by the Board, Patent
`Owner’s sur-reply shall not introduce new evidence. Patent Owner’s sur-
`reply shall be limited to 15 pages.
`
`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. 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
`
`7
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`PGR2018-00048
`Patent 9,693,961 B2
`
`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
`The patent owner may file—
`A response to the petition (37 C.F.R. § 42.120). If Patent
`a.
`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. See 37 C.F.R. § 42.121(a). Patent Owner should arrange for
`a conference call with the panel and opposing counsel at least two weeks
`before DUE DATE 1 to satisfy the requirement. The parties are directed to
`the Board’s Guidance on Motions to Amend in view of Aqua Products,
`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_
`to_amend_11_2017.pdf), and Western Digital Corp. v. SPEX Techs., Inc.,
`Case IPR2018-00082 (PTAB Apr. 25, 2018) (Paper 13) (providing
`information and guidance on motions to amend) . .
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`
`8
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`PGR2018-00048
`Patent 9,693,961 B2
`
`Patent Owner may file a reply to the opposition to the motion to
`amend.
`4. DUE DATE 4
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend.
`Either party may file a motion to exclude evidence (37 C.F.R. §
`42.64(c)).
`5. DUE DATE 5
`Either party may file 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.
`Either party may request that the Board hold a pre-hearing conference.
`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
`an order setting the start time of the hearing and the procedures that will
`govern the parties’ arguments.
`
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`PGR2018-00048
`Patent 9,693,961 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .......................................................................... January 7, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .............................................................................. April 5, 2019
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ............................................................................... May 6, 2019
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the
`petition
`Patent Owner’s reply to Petitioner’s opposition to the motion to
`amend
`
`DUE DATE 4 ............................................................................... June 5, 2019
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition
`to the motion to amend
`Motion to exclude evidence
`Request for oral argument (parties may not stipulate to an
`extension for the request for oral argument)
`
`DUE DATE 5 ............................................................................. June 12, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................. June 19, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`
`10
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`
`
`PGR2018-00048
`Patent 9,693,961 B2
`
`DUE DATE 7 .............................................................................. July 10, 2019
`Oral argument (if requested)
`
`
`
`
`11
`
`
`
`PGR2018-00048
`Patent 9,693,961 B2
`
`For PETITIONER:
`Cyrus A. Morton
`Christopher A. Pinahs
`Kelsey J. Thorkelson
`ROBINS KAPLAN LLP
`CMorton@Robinskaplan.com
`CPinahs@Robinskaplan.com
`KThorkelson@Robinskaplan.com
`
`
`For PATENT OWNER:
`Pablo D. Hendler
`Kelsey I. Nix
`Gasper J. LaRosa
`Kenneth S. Canfield
`Sarah A. Geers
`JONES DAY
`phendler@jonesday.com
`knix@jonesday.com
`gjlarosa@jonesday.com
`kcanfield@jonesday.com
`sgeers@jonesday.com
`
`
`12
`
`
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