`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 12
`Entered: October 29, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`PHIGENIX, INC,
`Petitioner,
`
`v.
`
`IMMUNOGEN, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00676
`Patent 8,337,856 B2
`____________
`
`
`
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`ZHENYU YANG, Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`A.
`
`INITIAL CONFERENCE CALL
`
`
`
`
`
`
`
`An initial conference call with the Board is scheduled for 2:00 PM Eastern
`
`Time on December 2, 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 5 (earlier or later, but no later than DUE DATE 6). 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 6 and 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.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`A motion to amend the patent (37 C.F.R. § 42.121).
`
`2
`
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`
`
`
`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. Each party must file any motion for an observation on the cross-
`
`examination testimony of a reply witness (see section C, 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.
`
`Each party must file any response to an 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.
`
`3
`
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`
`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 parties 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 opposing party
`
`may respond to the observation. Any response must be equally concise and
`
`specific.
`
`4
`
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`
`
`DUE DATE APPENDIX
`
`
`
`DUE DATE 1…………………………………….....…...………...January 22, 2014
`
`
`
`
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`
`DUE DATE 2…………………………………………………...........April 16, 2014
`
`
`
`
`
`Petitioner’s reply to Patent Owner’s response to petition
`
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`
`DUE DATE 3…………………………………………………….…...May 14, 2014
`
`Patent Owner’s reply to Petitioner’s opposition
`to Patent Owner’s motion to amend
`
`
`
`
`DUE DATE 4……………………………….……....……………….…June 4, 2014
`
`Petitioner’s motion for observation regarding
`cross-examination of reply witness
`
`
`
`
`
`
`
`
`DUE DATE 5……………………………………………..……..……June 18, 2014
`
`Motion to exclude evidence
`
`Request for oral argument
`
`
`
`Patent Owner’s response to observation
`
`Opposition to motion to exclude evidence
`
`
`
`DUE DATE 6……………………………………….….….……....….June 25, 2014
`
`Reply to opposition to motion to exclude evidence
`
`
`
`
`
`DUE DATE 7……………………………………………….……….….July 9, 2014
`
`Oral argument (if requested)
`
`
`
`
`
`5
`
`
`
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`For PETITIONER:
`
`Ping Wang
`PingWang@andrewskurth.com
`
`
`
`
`
`For PATENT OWNER:
`
`Eldora Ellison
`eellison-PTAB@skgf.com
`
`Eric Steffe
`esteffe-PTAB@skgf.com
`
`
`
`6
`
`
`
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