`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 16
`Entered: March 25, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MEDTRONIC, INC., and MEDTRONIC VASCULAR, INC.
`Petitioner
`
`v.
`
`ENDOTACH LLC
`Patent Owner
`_______________
`
`Case IPR2014-00100
`Patent 5,593,417
`_______________
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`A.
`INITIAL CONFERENCE CALL
`An initial conference call with the Board is scheduled for 11:00 AM Eastern
`
`Time on April 17, 2014.
`
`
`
`
`
`B. DUE DATES
`
`This order sets due dates for the parties to take action in this trial. 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 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
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (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 a 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).
`
`2
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`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 arrange a conference call with the parties and the Board. The patent owner is
`cautioned that any argument for patentability not raised and fully briefed in the
`response will be deemed waived.
`
`
`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.
`
`3
`
`
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`b. Each party may file an opposition to a motion to exclude evidence. Any
`
`such filing must be made by DUE DATE 5.
`
`
`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.
`
`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.
`
`
`
`
`
`
`
`
`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. at 48,768.
`The 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
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`
`
`
`
`DUE DATE APPENDIX
`DUE DATE 1………………………………………….....…………...June 10, 2014
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2…………………………………………….....……...August 26, 2014
`
`Petitioner’s reply to Patent Owner’s response to petition
`
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3……………………………………………….….September 23, 2014
`
`Patent Owner’s reply to Petitioner’s opposition
`
`to Patent Owner’s motion to amend
`
`DUE DATE 4……………………………….……....………..….…October 9, 2014
`
`Petitioner’s motion for observation regarding
`
`cross-examination of reply witness
`
`
`
`
`
`DUE DATE 5…………………………………………………..…October 23, 2014
`
`Patent Owner’s response to observation
`
`Opposition to motion to exclude evidence
`
`DUE DATE 6……………………………………………….....….October 30, 2014
`
`Reply to opposition to motion to exclude evidence
`
`DUE DATE 7……………………………………….………….November 20, 2014
`
`Oral argument (if requested)
`
`
`Motion to exclude evidence
`
`Request for oral argument
`
`5
`
`
`
`
`Case IPR2014-00100
`Patent 5,593,417
`
`PETITIONER:
`
`
`
`
`
`
`
`Jack Barufka
`Pillsbury Winthrop Shaw Pittman LLP
`barufka@pillsburylaw.com
`
`Ngai Zhang
`Pillsbury Winthrop Shaw Pittman LLP
`ngai.zhang@pillsburylaw.com
`
`
`
`PATENT OWNER:
`
`
`Matthew Phillips
`Renaissance IP Law Group LLP
`matthew.phillips@renaissanceiplaw.com
`
`Brett M. Pinkus
`Friedman, Suder & Cooke
`pinkus@fsclaw.com
`
`Jonathan T. Suder
`Friedman, Suder & Cooke
`jts@fsclaw.com
`
`
`6
`
`
`
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