`571-272-7822
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` Paper No. 14
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`Entered: April 19, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ADELLO BIOLOGICS LLC,
`APOTEX INC. and APOTEX CORP.,
`Petitioners,
`v.
`AMGEN INC. and AMGEN MANUFACTURING LIMITED
`Patent Owner.
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`Case PGR2019-00001
`Patent No. 9,856,287 B2
`____________
`
`
`Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
`J. JOHN LEE, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
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`SCHEDULING ORDER
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`PGR2019-00001
`Patent No. 9,856,287 B2
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`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.
`Protective Order
`2.
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. Papers and exhibits filed with the Board
`are public unless designated as confidential when filed. 37 C.F.R. § 42.14.
`Papers and exhibits may be filed as confidential if filed with a motion to
`seal. Id. Those papers and exhibits will remain under seal provisionally
`until the Board renders its decision on the motion. Id.
`A motion to seal must include a proposed protective order, or must
`refer to a protective order already approved in the proceeding. 37 C.F.R.
`§ 42.54(a). We encourage the parties to adopt the Board’s default protective
`order if they conclude that a protective order is necessary. See Default
`Protective Order, Practice Guide, App’x B. 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
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`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
`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.
`3.
`Discovery Disputes
`The Board encourages parties to resolve disputes relating to discovery
`on their own. To the extent that a dispute arises between the parties relating
`to discovery, the parties must 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 any request for a conference call with the Board to resolve a
`discovery dispute, the requesting party shall: (a) certify that it has conferred
`with the other party in a good faith effort to resolve the dispute; (b) identify
`with specificity the issues for which agreement has not been reached;
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`(c) identify the precise relief to be sought; and (d) propose specific dates and
`times at which both parties are available for the conference call.
`4.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the 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.
`5.
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`Cross-examination ordinarily 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.
`6. 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. 37 C.F.R. § 42.221(a). To satisfy this
`requirement, Patent Owner should request a conference call with the Board
`no later than two weeks prior to DUE DATE 1. See Section B below
`regarding DUE DATES.
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`Patent Owner has the option to receive preliminary guidance from the
`Board on its motion to amend. See Notice Regarding a New Pilot Program
`Concerning Motion to Amend Practice and Procedures in Trial Proceedings
`under the America Invents Act before the Patent Trial and Appeal Board, 84
`Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”). If Patent
`Owner elects to request preliminary guidance from the Board on its motion,
`it must do so in its motion to amend filed on DUE DATE 1.
`Any motion to amend and briefing related to such a motion shall
`generally follow the practices and procedures described in MTA Pilot
`Program Notice unless otherwise ordered by the Board in this proceeding.
`The parties are further directed to the Board’s Guidance on Motions to
`Amend in view of Aqua Products (https://go.usa.gov/xU6YV), and
`Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129 (Paper 15) (PTAB
`Feb. 25, 2019) (precedential).
`As indicated in the MTA Pilot Program Notice, Patent Owner has the
`option at DUE DATE 3 to file a revised motion to amend (instead of a reply)
`after receiving petitioner’s opposition to the original motion to amend and/or
`after receiving the Board’s preliminary guidance (if requested). A revised
`motion to amend must provide amendments, arguments, and/or evidence in a
`manner that is responsive to issues raised in the preliminary guidance and/or
`petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board shall enter
`a revised scheduling order setting the briefing schedule for that revised
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`motion and adjusting other due dates as needed. See MTA Pilot Program
`Notice, App’x B 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary board guidance on the motion to amend and Patent Owner
`does not file either a reply to the opposition to the motion to amend or a
`revised motion to amend at Due Date 3, Petitioner may file a reply to the
`Board’s preliminary guidance, no later than three weeks after Due Date 3.
`The reply may only respond to the preliminary guidance. Patent Owner may
`file a sur-reply in response to Petitioner’s reply to the Board’s preliminary
`guidance. The sur-reply may only respond to arguments made in the reply
`and must be filed no later than three weeks after the Petitioner’s reply. No
`new evidence may accompany the reply or the sur-reply in this situation.
`7.
`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.
`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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`Parties should note that the earlier a request for accommodation is made, the
`more likely the Board will be able to accommodate additional individuals.
`8.
`Communications with the Board
`Parties may request a conference with us by contacting the Board staff
`by e-mail at Trials@uspto.gov or by telephone at 571-272-7822. An email
`requesting a conference call should copy the other party, indicate generally
`the relief being requested or the subject matter of the conference call, state
`whether the opposing party opposes the request, and include multiple times
`when all parties are available. The email may not contain substantive
`argument. The parties also are reminded that they should discuss and
`attempt to resolve issues with each other first before requesting conference
`calls with the Board.
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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 different dates for DUE
`DATES 1 through 3, 5, and 6 (earlier or later, but no later than DUE DATE
`7). In stipulating to move any due dates in the scheduling order, the parties
`must be cognizant that the Board requires four weeks after the filing of an
`opposition to the motion to amend (or the due date for the opposition, if
`none is filed) for the Board to issue its preliminary guidance, if requested by
`Patent Owner. A notice of the stipulation, specifically identifying the
`changed due dates, must be promptly filed. The parties may not stipulate an
`extension of DUE DATES 4, 7, and 8.
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`In stipulating 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 (§ 42.64(b)(2)), to conduct cross-examination
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`1. DUE DATE 1
`Patent Owner may file—
`a. A response to the petition (37 C.F.R. § 42.220). If Patent 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.
`b. A motion to amend the patent (37 C.F.R. § 42.221).
`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.
`Patent Owner may also file either:
`a. a reply to the opposition to the motion to amend and preliminary
`board guidance (if provided); or
`b. a revised motion to amend.
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`4. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`5. DUE DATE 5
`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)).
`6. DUE DATE 6
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`8. DUE DATE 8
`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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`DUE DATE APPENDIX
`DUE DATE 1 .............................................................................. July 11, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ......................................................................... October 3, 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 ................................................................... November 13, 2019
`Patent Owner’s sur-reply to reply
`Patent Owner’s reply to opposition to motion to amend
`(or Patent Owner’s revised motion to amend)
`DUE DATE 4 ...................................................................... December 4, 2019
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 .................................................................... December 30, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`DUE DATE 6 .......................................................................... January 6, 2020
`Opposition to motion to exclude
`Request for pre-hearing conference
`DUE DATE 7 ........................................................................ January 13, 2020
`Reply to opposition to motion to exclude
`DUE DATE 8 ........................................................................ January 29, 2020
`Oral argument (if requested)
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`PGR2019-00001
`Patent No. 9,856,287 B2
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`For PETITIONER:
`
`Teresa Rea
`trea@crowell.com
`
`Deborah Yellin
`dyellin@crowell.com
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`Shannon Lentz
`slentz@crowell.com
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`For PATENT OWNER:
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`J. Steven Baughman
`sbaughman@paulweiss.com
`GRP-AmgenPGR@paulweiss.com
`
`Megan Raymond
`mraymond@paulweiss.com
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`Catherine Nyarady
`cnyarady@paulweiss.com
`
`Jenifer Wu
`jwu@paulweiss.com
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