Trials@uspto.gov
`571-272-7822
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`Paper 10
`Date: January 2, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APOTEX CORP.
`Petitioner
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`v.
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`ALCON RESEARCH, LTD.
`Patent Owner
`_______________
`
`Case IPR2013-00428
`U.S. Patent No. 8,268,299 B2
`_______________
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and RAMA G. ELLURU,
`Administrative Patent Judges.
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`PRATS, Administrative Patent Judge.
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`SCHEDULING ORDER
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`571-272-7822
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`Paper 10
`Date: January 2, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APOTEX CORP.
`Petitioner
`
`v.
`
`ALCON RESEARCH, LTD.
`Patent Owner
`_______________
`
`Case IPR2013-00428
`U.S. Patent No. 8,268,299 B2
`_______________
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
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`Case IPR2013-00428
`Patent No. 8,268,299 B2
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`A. DUE DATES
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`This order sets due dates for the parties to take action after institution of the
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`proceeding. The parties may stipulate to different dates for DUE DATES 1
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`through 3 (earlier or later, but no later than DUE DATE 4). A notice of the
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`stipulation, specifically identifying the changed due dates, must be promptly filed.
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`The parties may not stipulate to an extension of DUE DATES 4-7.
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`In stipulating to different times, the parties should consider the effect of the
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`stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement
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`evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.
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`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
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`examination testimony (see section B, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Trial Practice Guide, 77 Fed.Reg. 48756, 48772 (Aug. 14, 2012)
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`(Appendix D), apply to this proceeding. The Board may impose an appropriate
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`sanction for failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
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`example, reasonable expenses and attorneys’ fees incurred by any party may be
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`levied on a person who impedes, delays, or frustrates the fair examination of a
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`witness.
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`1. DUE DATE 1
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`The patent owner may file—
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`a. A response to the petition (37 C.F.R. § 42.120), and
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`b. A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by DUE
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`DATE 1. If the patent owner elects not to file anything, the patent owner must
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`arrange a conference call with the parties and the Board. The patent owner is
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`2
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`Case IPR2013-00428
`Patent No. 8,268,299 B2
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`cautioned that any arguments for patentability not raised in the response will be
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`deemed waived.
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`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and opposition to
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`the motion to amend by DUE DATE 2.
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`3. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to patent
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`owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
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`a. The petitioner must file any motion for an observation on the cross-examination
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`testimony of a reply witness (see section C, below) by DUE DATE 4.
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`b. Each party must file any motion to exclude evidence (37 C.F.R § 42.64(c)) and
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`any request for oral argument (37 C.F.R. § 42.70(a)) by DUE DATE 4.
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` 5. DUE DATE 5
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`a. The patent owner must file any reply to a petitioner observation on cross-
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`examination testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude evidence by DUE
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`DATE 5.
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by DUE DATE 6.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE DATE 7.
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`3
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`Case IPR2013-00428
`Patent No. 8,268,299 B2
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1. Cross-examination begins after any supplemental evidence is due. 37 C.F.R.
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`§§ 42.53(d)(2).
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`2. Cross-examination ends no later than a week before the filing date for any paper
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`in which the cross-examination testimony is expected to be used. Id.
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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the petitioner with a
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`mechanism to draw the Board’s attention to relevant cross-examination testimony
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`of a reply witness, since no further substantive paper is permitted after the reply.
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`See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). The
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`observation must be a concise statement of the relevance of precisely identified
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`testimony to a precisely identified argument or portion of an exhibit. Each
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`observation should not exceed a single, short paragraph. The patent owner may
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`respond to the observation. Any response must be equally concise and specific.
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`4
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`Case IPR2013-00428
`Patent No. 8,268,299 B2
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`DUE DATE APPENDIX
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`DUE DATE 1…………………………………………………March 24, 2014
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2………………………………………………….June 16, 2014
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`Petitioner’s reply to patent owner response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3…………………………………………………July 14, 2014
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`Patent owner’s reply to petitioner opposition to motion to amend
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`DUE DATE 4…………………………………………………August 4, 2014
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`Petitioner’s motion for observation regarding
`cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5…………………………………………………August 18, 2014
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`Patent owner’s response to observation
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`Opposition to motion to exclude
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`DUE DATE 6…………………………………………………August 25, 2014
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`Reply to opposition to motion to exclude
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`5
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`Case IPR2013-00428
`Patent No. 8,268,299 B2
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`DUE DATE 7…………………………………………………September 17, 2014
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`Oral argument (if requested)
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`6
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`Case IPR2013-00428
`Patent No. 8,268,299 B2
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`FOR PETITONER:
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`Eldora L. Ellison
`Ralph W. Powers, II
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
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`
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`FOR PATENT OWNER:
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`Stanley E. Fisher
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
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`7
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