Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Date: February 15, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DAIICHI SANKYO, INC. and
`ASTRAZENECA PHARMACEUTICALS, LP,
`Petitioner,
`v.
`SEAGEN INC.,
`Patent Owner.
`
`PGR2021-00030
`Patent 10,808,039 B2
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, SHERIDAN K. SNEDDEN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`UPDATED SCHEDULING ORDER
`
`
`
`
`
`571-272-7822
`
`Paper 37
`Date: February 15, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DAIICHI SANKYO, INC. and
`ASTRAZENECA PHARMACEUTICALS, LP,
`Petitioner,
`v.
`SEAGEN INC.,
`Patent Owner.
`
`PGR2021-00030
`Patent 10,808,039 B2
`
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, SHERIDAN K. SNEDDEN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`UPDATED SCHEDULING ORDER
`
`
`
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`A. GENERAL INSTRUCTIONS
`Initial and Additional Conference Calls
`1.
`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 Consolidated Trial Practice Guide (“Consolidated
`Practice Guide”)1 at 9–10, 65 (guidance in preparing for a conference call);
`see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). A request for an initial
`conference call shall include a list of proposed motions, if any, to be
`discussed during the call.
`The parties may request additional conference calls as needed. Any
`email requesting a conference call with the Board should: (a) copy all
`parties, (b) indicate generally the relief being requested or the subject matter
`of the conference call, (c) include multiple times when all parties are
`available, (d) state whether the opposing party opposes any relief requested,
`and (e) if opposed, either certify that the parties have met and conferred
`telephonically or in person to attempt to reach agreement, or explain why
`such meet and confer did not occur. The email may not contain substantive
`argument and, unless otherwise authorized, may not include attachments.
`See Consolidated Practice Guide at 9–10.
`2.
`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
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`2
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`motion. It is the responsibility of the party whose confidential information is
`at issue, not necessarily the proffering party, to file the motion to seal.2 The
`Board encourages the parties to adopt the Board’s default protective order if
`they conclude that a protective order is necessary. See Consolidated Practice
`Guide at 107–122 (App. B, Protective Order Guidelines and 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
`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 Consolidated
`Practice Guide at 21–22.
`
`Discovery Disputes
`3.
`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
`
`
`2 If the entity whose confidential information is at issue is not a party to the
`proceeding, please contact the Board.
`
`3
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`before contacting the Board. If attempts to resolve the dispute fail, a party
`may request a conference call with the Board.
`4.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines)
`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.
`
`Cross-Examination
`5.
`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
`This case previously was instituted, and we vacated that institution
`decision on rehearing. Paper 17; Paper 31. Per the scheduling order that
`accompanied the original institution decision, the deadline for Patent Owner
`to file a motion to amend passed without such a motion having been filed.
`Paper 18, 11. Because we resume the proceeding at the point in the original
`schedule at which we vacated the original institution decision, no motion to
`amend is authorized.
`
`
`4
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`
`Oral Argument
`7.
`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.
`The parties may request that the oral argument be held at the USPTO
`headquarters in Alexandria, Virginia, or the Denver, Colorado, USPTO
`Regional Office. The parties may also request that the oral argument instead
`be held virtually by videoconference. For the parties’ information in making
`this decision one judge plans to appear remotely by video, one judge plans to
`appear in-person from the USPTO headquarters in Alexandria, Virginia, and
`one judge plans to appear in-person from the Denver, Colorado, USPTO
`Regional Office. The parties should state in the request for oral argument,
`DUE DATE 4, (1) whether the parties would prefer either a video hearing or
`an in-person hearing and (2) for in-person hearings, which of the locations
`named above the parties would prefer. To the extent the parties disagree,
`they should meet and confer; if the dispute cannot be resolved by meeting
`and conferring, the parties should inform the Board of each party’s
`individual preferences. PTAB will only conduct an in-person hearing when
`requested by all parties.
`Note that the Board may not be able to honor the parties’ preferences
`due to, among other things, the availability of hearing room resources, the
`needs of the panel, and USPTO policy at the time of the hearing. The Board
`will consider the parties’ request and notify the parties of how and where the
`hearing will be conducted.
`
`5
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`For in-person hearings, 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. Parties should note that the earlier a
`request for accommodation is made, the more likely the Board will be able
`to accommodate additional individuals.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`their skills and to aid in succession planning for the next generation. The
`Board defines a LEAP practitioner as a patent agent or attorney having
`three (3) or fewer substantive oral arguments in any federal tribunal,
`including PTAB. Parties are encouraged to participate in the Board’s LEAP
`program.3 The Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.4
`
`
`3 Information about the LEAP program can be found at www.uspto.gov/leap.
`4 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available at www.uspto.gov/leap.
`
`6
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent. The Board discerns
`that it is often LEAP practitioners who have the best understanding of the
`facts of the case and the evidence of record, and the Board encourages their
`participation.
`
`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, 2, 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.
`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.
`
`7
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`
`DUE DATE 1
`1.
`Because Patent Owner has already filed a response to the Petition
`under 37 C.F.R. § 42.220, Due Date 1 does not apply to the present
`proceeding.
`
`DUE DATE 2
`2.
`Petitioner may file a reply to the Patent Owner’s response.
`DUE DATE 3
`3.
`Patent Owner may file a sur-reply to Petitioner’s reply.
`DUE DATE 4
`4.
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`
`DUE DATE 5
`5.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`
`DUE DATE 6
`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.
`DUE DATE 7
`7.
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
`DUE DATE 8
`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.
`
`8
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .......................................................................... Not Applicable
`Patent Owner’s response to the petition
`DUE DATE 2 ........................................................................... April 25, 2023
`Petitioner’s reply to Patent Owner’s response to petition
`DUE DATE 3 .............................................................................. June 6, 2023
`Patent Owner’s sur-reply to reply
`DUE DATE 4 ............................................................................ June 27, 2023
`Request for oral argument (may not be extended by stipulation)
`DUE DATE 5 ............................................................................. July 18, 2023
`Motion to exclude evidence
`DUE DATE 6 ............................................................................. July 25, 2023
`Opposition to motion to exclude
`Request for prehearing conference
`DUE DATE 7 .......................................................................... August 1, 2023
`Reply to opposition to motion to exclude
`DUE DATE 8 ........................................................................ August 15, 2023
`Oral argument (if requested)
`
`
`9
`
`
`
`PGR2021-00030
`Patent 10,808,039 B2
`FOR PETITIONER:
`
`Preston Ratliff
`Naveen Modi
`Michael Stramiello
`PAUL HASTINGS LLP
`prestonratliff@paulhastings.com
`nveenmodi@paulhastings.com
`michaelstramiello@paulhastings.com
`
`David Berl
`Thomas Fletcher
`WILLIAMS & CONNOLLY LLP
`dberl@wc.com
`tfletcher@wc.com
`
`
`FOR PATENT OWNER:
`
`Matthew I. Kreeger
`Parisa Jorjani
`Mattherw Chivvis
`MORRISON & FOERSTER LLP
`mkreeger@mofo.com
`pjorjani@mofo.com
`mchivvis@mofo.com
`
`
`
`10
`
`
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