Trials@uspto.gov
`571-272-7822
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`Paper 19
`Entered: 15 April 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`MERIAL LIMITED,
`Petitioner,
`
`v.
`
`VIRBAC,
`Patent Owner.
`__________
`
`Case IPR2014-01279
`Patent 8,501,799 B2
`__________
`
`Before FRED E. McKELVEY, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
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`I. Due Dates
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`
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`This Scheduling Order sets due dates for the parties to take action after
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`institution of the above-identified inter partes review trial.
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`
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`The parties may stipulate to different dates for DUE DATES 1 through 5
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`(earlier or later, but not later than DUE DATE 6).
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`
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`A notice of any stipulation, specifically identifying the changed due dates,
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`must be promptly filed.
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`The parties may not stipulate to an extension of DUE DATES 6 and 7.
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`IPR2014-01279
`Patent 8,501,799 B2
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`In stipulating to difference dates, the parties should consider the effect of the
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`stipulation on the following times to:
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`(1) objection to admissibility of evidence (37 C.F.R. § 42.64(b)(1));
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`(2) serving supplemental evidence (37 C.F.R. § 42.64(b)(2));
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`(3) conducting cross-examination (37 C.F.R. § 42.53(d)(2)); and
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`(4) drafting papers depending on the evidence and cross-examination
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`testimony (see Part V, below).
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`
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`The Testimony Guidelines appended to the Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48772 (Aug. 14, 2012) (Appendix D—copy attached)
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`apply to these trials.
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`
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`The Board may impose an appropriate sanction for failure to adhere to the
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`Testimony Guidelines. 37 C.F.R. § 42.12.
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`For example, reasonable expenses and attorney fees incurred by any party
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`may be levied on a person who impedes, delays, or frustrates the fair examination
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`of a witness.
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`Unless agreed to by the parties, any redirect examination shall proceed,
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`without a recess, immediately after conclusion of cross-examination; “coaching” of
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`a witness is not permitted.
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`II. Initial Conference Call
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`A. Guidance
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`
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`The Trial Practice Guide, 77 Fed. Reg. at 48765–66 (see E. Initial
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`Conference Call (One Month After Instituting Trial)), sets out guidance in
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`preparing for the initial conference call.
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`
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`The parties should be prepared to discuss any proposed changes to this
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`Scheduling Order and any motions the parties anticipate filing during the trial.
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`IPR2014-01279
`Patent 8,501,799 B2
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`No later than 13 May 2015, the parties shall file a list of proposed motions.
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`37 C.F.R. § 42.21(a); Trial Practice Guide, 77 Fed. Reg. at 48765 (col. 3).
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`B. Specific Matters
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`1.
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`
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`The parties should be prepared to advise the Board of the status of any
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`litigation between the parties.
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`2.
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`
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`The parties should be prepared to advise the Board whether the parties
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`contemplate use of alternative dispute resolution procedures.
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`3.
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`
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`Patent Owner should be prepared to advise the Board whether it intends to
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`file a Motion to Amend.
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`4.
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`
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`Patent Owner should be prepared to advise the Board if it intends to reply on
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`unexpected results or “secondary considerations” in opposing any ground
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`involving § 103(a) and the general nature of any proofs.
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`C. Other matters
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`1.
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`The parties are advised that when a document with a large number of pages,
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`(e.g., a file wrapper) is offered in evidence, generally the only pages of the
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`document that will be considered by the Board are the specific pages mentioned in
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`a motion, opposition, or reply.
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`
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`Pages of the large document not mentioned in a motion, opposition, or reply,
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`or otherwise discussed in a written order by the Board will not be considered as
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`having been admitted into evidence.
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`IPR2014-01279
`Patent 8,501,799 B2
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`The style of any paper filed in the future shall not exceed one line.
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`2.
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`3.
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`
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`Any evidence served in response to an objection to admissibility of evidence
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`shall be filed with the Board upon being served.
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`IV. Due Dates
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`A. DUE DATE 1
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`
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`On or before DUE DATE 1, Patent Owner may file:
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`(1) a Response to the Petition (37 C.F.R. § 42.120(a)), and
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`(2) a Motion to Amend in connection with an involved unexpired
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`patent (37 C.F.R. § 42.121(a)).
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`If the Patent Owner elects not to file a Response or a Motion to Amend, the
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`Patent Owner must arrange for a conference call with the parties and the Board.
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`
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`Patent Owner is cautioned that any argument that could have been made in
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`support of patentability that is not raised in the Response will be deemed waived.
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`B. DUE DATE 2
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`On or before DUE DATE 2, Petitioner may file
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`(1) a Reply to any Patent Owner Response and
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`(2) an Opposition to any Patent Owner Motion to Amend.
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`C. DUE DATE 3
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`On or before DUE DATE 3, Patent Owner may file a Reply to any
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`
`
`
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`Opposition to any Patent Owner Motion to Amend.
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`On or before DUE DATE 4, each party may file:
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`D. DUE DATE 4
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`IPR2014-01279
`Patent 8,501,799 B2
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`(1) Observation on the cross-examination testimony of a reply
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`witness (see Section VI, below);
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`(2) a Motion to Exclude Evidence (37 C.F.R. § 42.64(c)); and
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`(3) a Request for Oral Argument (37 C.F.R. § 42.70(a)).
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`A motion to exclude shall be limited to the issue of admissibility under the
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`rules (37 C.F.R. § 42.61(a)) or the Federal Rules of Evidence (37 C.F.R. § 42.62).
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`Assuming evidence is not excluded, the weight to be given evidence should
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`be addressed only in the Patent Owner’s Response and the Petitioner’s Reply.
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`A Motion to Exclude is not a means for further addressing the merits.
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`On or before DUE DATE 5, each party may file:
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`E. DUE DATE 5
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`(1) a Response to an Observation on cross-examination testimony;
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`and
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`(2) an Opposition to a Motion to Exclude Evidence.
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`F. DUE DATE 6
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`On or before DUE DATE 6, a party may file a reply to an opposition to a
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`
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`motion to exclude evidence.
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`G. DUE DATE 7
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`Oral argument, if requested by either party, is set for DUE DATE 7.
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`V. Cross-Examination
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`Except as agreed to by the parties, for each due date:
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`(1) cross-examination begins (a) if an objection to admissibility
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`of evidence was made, after any supplemental evidence (37 C.F.R.
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`§ 42.64(b)(2)) is filed and served (37 C.F.R. § 42.53(d)(2)) or (b) if no
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`IPR2014-01279
`Patent 8,501,799 B2
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`objection to admissibility of evidence is made, when the time expires for
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`making objections; and
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`(2) cross-examination ends no later than one week before the filing
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`date for any paper in which cross-examination testimony is expected to be
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`used (id.).
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`VI. Observation on Reply Cross-Examination
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`
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`An Observation on reply cross-examination provides the parties 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 because no further substantive paper is permitted after
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`Petitioner’s Reply. See Trial Practice Guide, 77 Fed. Reg. at 48768 (Aug. 14,
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`2012).
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`
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`The Observation must be a concise statement of the relevance of precisely
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`identified testimony to a precisely identified argument or portion of an exhibit.
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`Each observation should not exceed a single, short paragraph.
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`An opposing party may file a Response to the Observation. See DUE
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`DATE 5(1).
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`
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`Any response must be equally concise and specific.
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`VII. Motion to Amend
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`Notwithstanding the page limits set forth in 37 C.F.R. § 42.24 for motions
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`(§ 42.24(a)(1)(v)), oppositions (§ 42.24(b)(3)), and replies (§ 42.24(c)(2)), the
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`parties are authorized the following page limits:
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`
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`
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`(1) Motion to Amend—up to twenty-five (25) pages;
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`(2) In addition to the twenty-five (25) pages, a copy of any proposed
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`amended claims may be included as an Appendix to the Motion to Amend;
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`(3) Opposition to Motion to Amend—up to twenty-five (25) pages;
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`and
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`IPR2014-01279
`Patent 8,501,799 B2
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`(4) Patent Owner’s Reply to any Opposition—up to twelve (12)
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`pages.
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`See 37 C.F.R. § 42.5(b).
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`VIII. Petitioner’s Reply
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`
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`Notwithstanding the page limit set forth in 37 C.F.R. § 42.24(c)(1),
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`Petitioner’s Reply to any Patent Owner Response is limited to up to twenty-five
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`(25) pages. See 37 C.F.R. § 42.5(b).
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`IPR2014-01279
`Patent 8,501,799 B2
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL …………………….. 18 May 2015
`1:00 p.m. (ET)
`
`DUE DATE 1 ................................................................ 07 July 2015
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`
`
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`Patent Owner Response to Petition
`Patent Owner Motion to Amend
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`DUE DATE 2 …………………………………………
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` 28 Sept. 2015
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`Petitioner Reply to Patent Owner Response
`Petitioner Opposition to Motion to Amend
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`
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`DUE DATE 3 ………………………………………… 28 Oct. 2015
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`
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`Patent Owner Reply to Opposition to
`Motion to Amend
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`DUE DATE 4 ………………………………………… 18 Nov. 2015
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`
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`
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`Observation of cross-examination of reply witness
`Motion to Exclude Evidence
`Request for Oral Argument
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`DUE DATE 5 ………………………………………… 02 Dec. 2015
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`
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`Response to Observation
`Opposition to Motion to Exclude
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`DUE DATE 6 ………………………………………… 09 Dec. 2015
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`
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`Reply to Opposition to Motion to Exclude
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`DUE DATE 7 ………………………………………… 07 Jan. 2016
`Oral argument, if requested
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`
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`1:00 pm (ET)
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`IPR2014-01279
`Patent 8,501,799 B2
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`For PETITIONER:
`
`Judy Jarecki-Black
`John Ezcurra
`MERIAL LIMITED
`judy.jarecki@merial.com
`john.ezcurra@merial.com
`
`Thomas J. Kowalski
`VEDDER PRICE PC
`tkowalski@vedderprice.com
`
`For PATENT OWNER:
`
`Nicolas E. Seckel
`Scott D. Daniels
`Michael J. Caridi
`WESTERMAN, HATTORI, DANIELS & ADRIAN LLP
`nseckel@whda.com
`sdaniels@whda.com
`mcaridi@whda.com
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`48772
`
`Federal Register/Vol. 77, No. 157/Tuesday, August 14, 2012/Rules and Regulations
`
`proposed modifications within one month
`after the initiation date of the proceeding or
`by the date of the initial conference call,
`whichever is earlier. If the parties cannot
`resolve their disagreements regarding these
`modifications, the parties shall submit their
`competing proposals and a summary of their
`dispute within the specified time period.
`3. Costs will be shifted for disproportionate
`ESI production requests. Likewise, a party's
`nonresponsive or dilatory discovery tactics
`will be cost-shifting considerations. See 35
`U.S.C. 316(a)(6), as amended, and 326(a)(6).
`4. A party's meaningful compliance with
`this Order and efforts to promote efficiency
`and reduce costs will be considered in cost­
`shifting determinations.
`5. Unless otherwise authorized by the
`Board or agreed to by the parties, any
`production ofESI pursuant to §§ 42.51 or
`42.52 shall not include metadata. However,
`fields showing the date and time that the
`document was sent and received, as well as
`the complete distribution list, shall generally
`be included in the production if such fields
`exist.
`6. General ESI production under §§42.51
`and 42.52 (with the exception of routine
`discovery under § 42.51(b)(1)) shall not
`include email or other forms of electronic
`correspondence (collectively "email"). To
`obtain additional production of email, absent
`an agreement between the parties to produce,
`the parties must propound specific email
`production requests, which requests require
`prior Board authorization.
`7. Email production requests, where
`authorized by the Board or permitted by
`agreement of the parties, shall be
`propounded for specific issues only, rather
`than general discovery of a party's products
`or business.
`8. Email production requests, where
`authorized by the Board or permitted by
`agreement of the parties, shall be phased to
`occur after a party's initial production under
`§ 42.51(b)(1).
`9. Where email production requests are
`authorized by the Board or permitted by
`agreement of the parties, such requests shall
`identify the custodian, search terms, and
`time frame. The parties shall cooperate to
`identify proper custodians, proper search
`terms, and proper time frame.
`10. Each requesting party shall limit its
`email production requests to a total of five
`custodians per producing party for all such
`requests. The parties may jointly agree to
`modify this limit without the Board's leave,
`The Board shall consider contested requests
`for up to five additional custodians per
`producing party, upon showing a need based
`on the size, complexity, and issues ofthis
`specific proceeding.
`11. Each party shall limit its email
`production requests to a total of five search
`terms per custodian per party. The parties
`may jointly agree to modify this limit without
`the Board's leave. The Board shall consider
`contested requests for up to five additional
`search terms per custodian, upon showing a
`need based upon the size, complexity, and
`issues of this specific proceeding. The search
`terms shall be narrowly tailored to particular
`issues. Indiscriminate terms, such as
`producing company's name or its product
`
`name, are inappropriate unless combined
`with narrowing search criteria that
`sufficiently reduce the risk of
`overproduction. A conjunctive combination
`of multiple words or phrases (e.g.,
`"computer" and "system") narrows the
`search and shall count as a single search
`term. A disjunctive combination of multiple
`words or phrases (e.g., "computer" or
`"system") broadens the search, and thus each
`word or phrase shall count as a separate
`search term unless they are variants of the
`same word. Use of narrowing search criteria
`(e.g., "and," "but not," "wfx"] is encouraged
`to limit the production, and shall be
`considered when determining whether to
`shift costs for disproportionate discovery.
`12. The receiving party shall not use ESI
`that the producing party asserts is attorney­
`client privileged or work product protected
`to challenge the privilege or protection.
`13. Pursuant to Federal Rule of Evidence
`502(b). the inadvertent production of an
`attorney-client privileged or work product
`protected ESI is not a waiver of such
`protection providing the holder of the
`privilege or protection took reasonable steps
`to prevent disclosure and the discloser
`promptly took reasonable steps to rectify the
`error.
`14. Similar to Federal Rule of Evidence
`502(d), the mere production of ESI in the
`proceeding as part of a mass production shall
`not itself constitute a waiver of privilege for
`any purpose before the Office.
`APPENDIX D: Testimony Guidelines
`Introduction
`In trials before the Board, uncompelled
`direct testimony is almost always presented
`by affidavit or declaration. § 42.53(a). All
`other testimony (including cross­
`examination, redirect examination, and
`compelled direct testimony) occurs by oral
`examination.
`Consistent with the policy expressed in
`Rule 1 of the Federal Rules of Civil
`Procedure, and corresponding § 42.1(b),
`unnecessary objections, "speaking"
`objections, and coaching of witnesses in
`proceedings before the Board are strictly
`prohibited. Cross-examination testimony
`should be a question and answer
`conversation between the examining lawyer
`and the witness. The defending lawyer must
`not act as an intermediary, interpreting
`questions, deciding which questions the
`witness should answer, and helping the
`witness formulate answers while testifying.
`The testimony guidelines that follow are
`based on those set forth in the Federal Rules
`of Civil Procedure, supplemented by the
`practices followed in several federal district
`courts.
`Examination and Cross-examination Outside
`the Presence of the Board
`1. The examination and cross-examination
`of a witness proceed as they would in a trial
`under the Federal Rules of Evidence, except
`that Rule 103 (Rulings on Evidence) does not
`applY, After putting the witness under oath
`or affirmation, the officer must record the
`testimony by audio, audiovisual, or
`stenographic means. Testimony must be
`recorded by the officer personally, or by a
`
`person acting in the presence and under
`direction of the officer.
`2. An objection at the time of the
`examination-whether to evidence, to a
`party's conduct, to the officer's
`qualifications, to the manner of taking the
`testimony, or any aspect of the testimony­
`must be noted on the record, but the
`examination still proceeds; testimony is
`taken subject to any such objection.
`3. An objection must be stated concisely in
`a non-argumentative and non-suggestive
`manner. Counsel must not make objections or
`statements that suggest an answer to a
`witness. Objections should be limited to a
`single word or term. Examples of objections
`that would be properly stated are:
`"Objection, form"; "Objection, hearsay";
`"Objection, relevance"; and "Objection,
`foundation." Examples of objections that
`would not be proper are: "Objection, I don't
`understand the question"; "Objection,
`vague"; "Objection, take your time answering
`the question"; and "Objection, look at the
`document before
`answer." An objecting
`party must give a
`and concise
`explanation of an objection if requested by
`the party taking the testimony or the
`objection is waived.
`4. Counsel may instruct a witness not to
`answer only when necessary to preserve a
`privilege, to enforce a limitation ordered by
`the Board, or to present a motion to terminate
`or limit the testimony.
`5. Unless otherwise agreed by the parties
`or ordered by the Board, the testimony is
`limited in duration to the times set forth in
`§ 42.53(c). The Board may allow additional
`time if needed to examine the witness fairly
`or if the witness, another person, or any other
`circumstance impedes or delays the
`examination.
`6. Once the cross-examination of a witness
`has commenced, and until cross-examination
`of the witness has concluded, counsel
`offering the witness on direct examination
`shall not: (a) Consult or confer with the
`witness regarding the substance of the
`witness' testimony already given, or
`anticipated to be given, except for the
`purpose of conferring on whether to assert a
`privilege against testifying or on how to
`comply with a Board order; or (b) suggest to
`the witness the manner in which any
`questions should be answered.
`7. An attorney for a witness shall not
`initiate a private conference with the witness
`or call for a break in the proceedings while
`a question is pending, except for the purpose
`of determining whether a privilege should be
`asserted.
`8. The Board may impose an appropriate
`sanction-including the reasonable expenses
`and attorneys' fees incurred by any party­
`on a person who impedes, delays, or
`frustrates the fair examination of the witness.
`9. At any time
`the testimony, the
`witness or a party may move to terminate or
`limit the testimony on the ground that it is
`being conducted in bad faith or in a manner
`that unreasonably annoys, embarrasses, or
`oppresses the witness or party. The witness
`or party must promptly initiate a conference
`call with the Board to discuss the proposed
`motion. § 42.20(b). If the objecting witness or
`party so demands, the testimony must be
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`Federal Register/Vol. 77, No. 157/Tuesday, August 14, 2012/Rules and Regulations
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`48773
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`suspended for the time necessary to obtain a
`ruling from the Board, except as the Board
`may otherwise order.
`
`Dated: July 16. 2012.
`David J. Kappos.
`Under Secretary of Commerce for Intellectual
`Property and Director of the United States
`Patent and Trademark Office.
`[FR Doc. 2012-17908 Filed 8-13-12; 8:45 am]
`BILLING CODE 3510-16-P
`
`