Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: December 17, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMNEAL PHARMACEUTICALS, LLC
`Petitioner
`
`v.
`
`SUPERNUS PHARMACEUTICALS, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00372
`Patent 8,394,406
`_______________
`
`Before LORA M. GREEN, SCOTT E. KAMHOLZ, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: December 17, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMNEAL PHARMACEUTICALS, LLC
`Petitioner
`
`v.
`
`SUPERNUS PHARMACEUTICALS, INC.
`Patent Owner
`_______________
`
`Case IPR2013-00372
`Patent 8,394,406
`_______________
`
`Before LORA M. GREEN, SCOTT E. KAMHOLZ, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`Case IPR2013-00372
`Patent 8,394,406
`
`INITIAL CONFERENCE CALL
`The initial conference call is scheduled for 2:00 PM Eastern Time on
`January 10, 2014.
`
`A.
`
`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
`3 (earlier or later, but no later than DUE DATE 4). A notice of the stipulation,
`specifically identifying the changed due dates, must be filed promptly. 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 draft papers depending on the evidence and cross-
`examination testimony (see section C, below).
`The parties are reminded that the Testimony Guidelines appended to the
`Office Patent 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 attorneys’ 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
`
` 2
`
`
`
`
`
`
`
`
`Case IPR2013-00372
`Patent 8,394,406
`
`b. 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
`deemed waived.
`
`2. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`
`3. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to patent
`owner’s motion to amend by DUE DATE 3.
`
`4. DUE DATE 4
`a. The petitioner must file any motion for an observation on the cross-
`examination testimony of a reply witness (see section D, below) by DUE DATE 4.
`b. Each party must file any motion to exclude evidence (37 C.F.R § 42.64(c))
`and any request for oral argument (37 C.F.R. § 42.70(a)) by DUE DATE 4.
`
`5. DUE DATE 5
`a. The patent owner must file any reply to a petitioner observation on cross-
`examination testimony by DUE DATE 5.
`b. Each party must file any opposition to a motion to exclude evidence by
`DUE DATE 5.
`
`
`
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` 3
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`Case IPR2013-00372
`Patent 8,394,406
`
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by DUE
`DATE 6.
`
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE DATE 7.
`
`C. 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.
`
`D. 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, because no further substantive paper is permitted
`after the reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`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 patent owner may respond to the observation. Any response must
`be equally concise and specific.
`
` 4
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`Case IPR2013-00372
`Patent 8,394,406
`
`
`DUE DATE APPENDIX
`
`
`DUE DATE 1 .......................................................................... March 10, 2014
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`
`
`DUE DATE 2 .......................................................................... May 19, 2014
`
`Petitioner’s reply to patent owner response to petition
`
`
`Petitioner’s opposition to motion to amend
`
`
`DUE DATE 3 .......................................................................... June 9, 2014
`
`Patent owner’s reply to petitioner opposition to motion to amend
`
`DUE DATE 4 .......................................................................... June 30, 2014
`Petitioner’s motion for observation regarding cross-examination
`of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`
`
`
`DUE DATE 5 .......................................................................... July 14, 2014
`
`Patent owner’s response to observation
`
`Opposition to motion to exclude
`
`
`DUE DATE 6 .......................................................................... July 21, 2014
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .......................................................................... August 12, 2014
`Oral argument (if requested)
`
`
` 5
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`
`
`Case IPR2013-00372
`Patent 8,394,406
`
`FOR PETITIONER:
`
`Eldora L. Ellison
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison@skgf.com
`jtuminar-PTAB@skgf.com
`
`FOR PATENT OWNER:
`
`Stephen B. Maebius
`Sunit Talapatra
`Andrew S. Baluch
`FOLEY & LARDNER LLP
`smaebius@foley.com
`stalapatra@foley.com
`abaluch@foley.com
`
`
`
` 6
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`
`
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