`571-272-7822
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` Paper 12
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`Entered: December 20, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NUVASIVE, INC.
`Petitioner
`
`
`
`
`
`
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`____________
`
`Case IPR2013-00396
`Patent 8,444,696
`____________
`
`Before SALLY C. MEDLEY, LORA M. GREEN, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`Case IPR2013-00396
`Patent 8,444,696
`
`
`A. INITIAL CONFERENCE CALL
`The initial conference call is scheduled for 2:00 PM (ET) on January 16,
`
`2014.
`
`
`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 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 draft papers depending on the evidence and cross-
`examination testimony (see Section B, 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.
`response to the petition (37 C.F.R. § 42.120), and
`
`
`
`2
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`Case IPR2013-00396
`Patent 8,444,696
`
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`A motion to amend the patent (37 C.F.R. § 42.121).
`b.
`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 and fully briefed 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.
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`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 C) 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.
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`5. DUE DATE 5
`
`a. The patent owner must file any reply to a petitioner observation on cross-
`examination testimony by DUE DATE 5.
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`3
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`Case IPR2013-00396
`Patent 8,444,696
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`b. Each party must file any opposition to a motion to exclude evidence by
`DUE DATE 5.
`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.
`
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`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 Patent 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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`Case IPR2013-00396
`Patent 8,444,696
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`DUE DATE APPENDIX
`
`DUE DATE 1…………………………………………………….February 27, 2014
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2…………………………………………………..……..May 8, 2014
`Petitioner’s reply to patent owner response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3…………………………………………..………….......June 5, 2014
`Patent owner’s reply to petitioner opposition to motion to amend
`DUE DATE 4…………………………………………………………June 26, 2014
`Petitioner’s motion for observation regarding
`cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5…………………………………………………….……July 10, 2014
`
`Patent owner’s response to observation
`
`Opposition to motion to exclude
`DUE DATE 6………………………………………………….………July 17, 2014
`Reply to opposition to motion to exclude
`DUE DATE 7…………………………………………………….……July 31, 2014
`Oral argument (if requested)
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`5
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`Case IPR2013-00396
`Patent 8,444,696
`
`Petitioner:
`
`Stephen Schaefer
`Michael Hawkins
`FISH & RICHARDSON P.C.
`schaefer@fr.com
`hawkins@fr.com
`
`Patent Owner:
`
`Thomas Martin
`Wesley Meinerding
`MARTIN & FERRARO, LLP
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
`
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`6