Trial@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 16
` Entered: December 4, 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.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 16
` Entered: December 4, 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.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`
`1. Introduction
`
`
`
`
`
`On December 2, 2014, an initial conference call was conducted
`
`between respective counsel for the parties and Judges Prats, Bonilla, and Yang.
`
`Phigenix Inc. (“Petitioner”) was represented by counsel, Ping Wang and Gregory
`
`Porter. Immunogen, Inc. (“Patent Owner”) was represented by counsel, Eldora
`
`Ellison and Eric Steffe. The purpose of the call was to determine if the parties
`
`have any issues concerning the Scheduling Order (Papers 12, 13), and to discuss
`
`any motions contemplated by the parties. Prior to the call, Patent Owner filed a
`
`paper requesting authorization to file a motion for observations on cross-
`
`examination. Paper 14.
`
`2. Scheduling Order
`
`Neither party indicated any issues with respect to the Scheduling Order.
`
`We reminded the parties that, without obtaining prior authorization from the
`
`Board, they may stipulate to different dates for DUE DATES 1-5 by filing an
`
`appropriate notice with the Board.
`
`3. Discovery
`
`There are no discovery issues pending at this time. We remind the parties of
`
`the discovery provisions of 37 C.F.R. §§ 42.51–52 and Office Patent Trial Practice
`
`Guide. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761-2
`
`(Aug. 14, 2012). As noted in 37 C.F.R. § 42.51(b)(2)(i), the parties may agree to
`
`additional discovery between themselves. Discovery requests and objections are
`
`not to be filed with the Board without prior authorization. If the parties are unable
`
`to resolve discovery issues between them, the parties may request a conference
`
`with the Board. A motion to exclude, which does not require Board authorization,
`
`must be filed to preserve any objection. See 37 C.F.R. § 42.64, Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. at 48767.
`
`
`
`2
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`
`Each party may depose experts and affiants supporting the opposing party.
`
`
`
`
`
`The parties are reminded of the provisions for taking testimony found at 37 C.F.R.
`
`§ 42.53 and the Office Patent Trial Practice Guide at 77 Fed. Reg. at 48772,
`
`App. D.
`
`4. No Proposed Motion to Amend
`
`During the conference call, counsel for the Patent Owner indicated that
`
`Patent Owner will not file a motion to amend.
`
`5. Motion for observation regarding cross-examination of reply witness
`
`As stated in the conference call, each party may file a motion for an
`
`observation on the cross-examination testimony of a reply witness by DUE DATE.
`
`4. Likewise, each party may file a response to an observation on cross-
`
`examination testimony by DUE DATE 5.
`
`6. Motions
`
`The parties are reminded that, except as otherwise provided in the Rules,
`
`Board authorization is required before filing a motion. 37 C.F.R. § 42.20(b). A
`
`party seeking to file a motion should request a conference to obtain authorization
`
`to file the motion. No other motions are authorized in this proceeding at this time.
`
`7. Protective Order
`
`The parties have not discussed a protective order at this time. No protective
`
`order has been entered. Should circumstances change, the parties are reminded of
`
`the requirement for a protective order when filing a Motion to Seal. 37 C.F.R.
`
`§ 42.54. If the parties choose to propose a protective order other than or departing
`
`from the default Standing Protective Order, Office Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, App. B (Aug. 14, 2012), they must submit a joint, proposed
`
`protective order, accompanied by a red-lined version based on the default
`
`
`
`3
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`
`protective order in Appendix B to the Board’s Office Patent Trial Practice Guide.
`
`
`
`
`
`See id. at 48,769.
`
`
`
`Accordingly, it is
`
`ORDERED that Patent Owner and Petitioner are each authorized to file a
`
`motion for an observation on the cross-examination testimony of a reply witness
`
`by DUE DATE 4 in the Scheduling Order (Paper 13);
`
`FURTHER ORDERED that Patent Owner and Petitioner are each authorized
`
`to file a response to an observation on cross-examination testimony by DUE
`
`DATE 5 in the Scheduling Order; and
`
`FURTHER ORDERED that no other motions are authorized at this time,
`
`other than those already authorized by rule, the Notice of Filing Date Accorded to
`
`Petitioner, the Scheduling Order; and
`
`FURTHER ORDERED that due dates specified in the Errata Scheduling
`
`Order dated November 20, 2014, remain unchanged.
`
`
`
`
`
`4
`
`
`
`
`
`
`
`IPR2014-00676
`Patent 8,337,856 B2
`
`
`For PETITIONER:
`
`
`Ping Wang
`PingWang@andrewskurth.com
`
`Gregory Porter
`GregPorter@andrewskurth.com
`
`
`
`For PATENT OWNER:
`
`
`Eldora Ellison
`eellison-PTAB@skgf.com
`
`Eric Steffe
`esteffe-PTAB@skgf.com
`
`
`
`
`
`
`5
`
`
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