Paper 44
`Date: March 19, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC.
`Petitioner
`
`v.
`
`ALCON PHARMACEUTICALS, LTD.
`Patent Owner
`____________
`
`Case IPR2013-00012
`Patent 6,716,830
`____________
`
`Before SALLY GARDNER LANE, LORA M. GREEN, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`A. DUE DATES
`
`This order sets due dates for the parties to take action after institution of trial
`
`on the authorized grounds and claims. The parties may stipulate to different dates
`for DUE DATES 1 through 3 (earlier or later, but no later than DUE DATE 4). A
`
`
`Date: March 19, 2013
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC.
`Petitioner
`
`v.
`
`ALCON PHARMACEUTICALS, LTD.
`Patent Owner
`____________
`
`Case IPR2013-00012
`Patent 6,716,830
`____________
`
`Before SALLY GARDNER LANE, LORA M. GREEN, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`A. DUE DATES
`
`This order sets due dates for the parties to take action after institution of trial
`
`on the authorized grounds and claims. The parties may stipulate to different dates
`for DUE DATES 1 through 3 (earlier or later, but no later than DUE DATE 4). A
`
`
`
`
`
`
`IPR2013-00012
`
`Patent 6,716,830
`
`
`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 4-7.
`
`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 file papers relying on the evidence and cross-examination
`testimony (see section B, below).
`
`The parties are reminded that the Testimony Guidelines appended to the
`Trial Practice Guide, 77 Fed. Reg. 48756, 48772 (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 attorney fees incurred by any party may be levied on a
`person who impedes, delays, or frustrates the fair examination of a witness.
`
`1. 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).
`Any such response or motion to amend by the patent owner must be filed by DUE
`DATE 1. If the patent owner elects not to file anything, the patent owner must
`initiate a joint conference call with the petitioner and the Board prior to DUE
`DATE 1.
`
`
`
`
`
`
`2
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`
`
`IPR2013-00012
`Patent 6,716,830
`
`2. DUE DATE 2
`The petitioner may file a reply to the patent owner’s response and an opposition to
`the patent owner’s motion to amend. Any such filing must be made by DUE
`DATE 2.
`
`3. DUE DATE 3
`The patent owner may file a reply to the petitioner’s opposition to patent owner’s
`motion to amend. Any such filing must be made by DUE DATE 3.
`
`4. DUE DATE 4
`a. The petitioner may file a motion for an observation on the cross-examination
`testimony of a reply witness. (See section C, below). Any such filing must be
`made by DUE DATE 4.
`b. Each party may file a motion to exclude evidence (37 C.F.R § 42.64(c)) and a
`request for oral argument (37 C.F.R. § 42.70(a)). Any such filing must be made by
`DUE DATE 4.
`
`
`5. DUE DATE 5
`a. The patent owner may file a reply to a petitioner’s observation on cross-
`examination testimony. Any such filing must be made by DUE DATE 5.
`b. Each party may file an opposition to a motion to exclude evidence. Any such
`filing must be made by DUE DATE 5.
`
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`3
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`IPR2013-00012
`Patent 6,716,830
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`6. DUE DATE 6
`Each party may file a reply to an opposition to a motion to exclude evidence. Any
`such filing must be made by DUE DATE 6.
`
`7. 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. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`
`A motion for observation on cross-examination provides the petitioner with
`a mechanism to draw the Board’s attention to relevant cross-examination
`testimony of a reply witness, since no further substantive paper is permitted after
`the reply. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (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 patent owner
`may respond to the observation. Any response must be equally concise and
`specific.
`
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`4
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`IPR2013-00012
`Patent 6,716,830
`
`DUE DATE APPENDIX
`
`DUE DATE 1…………………………………………………. June 19, 2013
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2………………………………………………. September 19, 2013
`
`Petitioner’s reply to Patent Owner’s response to petition
`
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3………………………………………………….. October 21, 2013
`
`Patent Owner’s reply to Petitioner’s opposition to Patent
`
`Owner’s motion to amend
`
`DUE DATE 4……………………………………………… November 12, 2013
`
`
`
`
`
`Petitioner’s motion for observation regarding
`cross-examination of reply witness
`
`
`
`
`Motion to exclude evidence
`
`Request for oral argument
`
`
`
`DUE DATE 5……………………………………………… November 25, 2013
`
`Patent Owner’s response to observation
`
`Opposition to motion to exclude evidence
`
`DUE DATE 6…………………………………………… December 2, 2013
`
`Reply to opposition to motion to exclude evidence
`
`
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`5
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`IPR2013-00012
`Patent 6,716,830
`
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`DUE DATE 7……………………………………………… December 17, 2013
`
`Oral argument (if requested)
`
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`6
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`IPR2013-00012
`Patent 6,716,830
`
`For PETITIONER:
`Eldora Ellison
`Richard Hadron
`Sterne Kessler Goldstein & Fox, PLLC
`Email: eellison@skgf.com
`Email: rhadorn@skgf.com
`
`For PATENT OWNER
`
`Barry Copeland
`Alcon Research, Ltd.
`Email: barry.copeland@alconlabs.com
`
`
`7
`
`
`
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