`Tel: 571-272-7822
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`Paper 10
`Entered: July 15, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`C.R. BARD, INC.,
`Petitioner,
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`v.
`
`MEDLINE INDUSTRIES, INC.,
`Patent Owner.
`
`Case IPR2015-00513
`Patent 8,631,935 B2
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
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`SCHEDULING ORDER
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`IPR2015-00513
`Patent 8,631,935 B2
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`A. 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.
`Regardless of whether the parties stipulate to a change of DUE
`DATE 4, for Board planning purposes, requests for oral argument must be
`filed no later than the date set forth in this order for DUE DATE 4.
`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 draft papers depending 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. See 37 C.F.R. § 42.12. For example, reasonable expenses and
`attorneys’ fees incurred by any party may be levied on a person who
`impedes, delays, or frustrates the fair examination of a witness.
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`1. INITIAL CONFERENCE CALL
`An initial conference call has not been scheduled in this case. Should
`the parties have a need for an initial conference call to discuss substantial
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`Patent 8,631,935 B2
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`changes to this Scheduling Order or authorization for motions, the parties
`are to notify the Board jointly within one month of institution of trial.
`Should an initial conference call be necessary, the parties are directed to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,765–66 for guidance
`in preparing for the initial conference call, and should be prepared to discuss
`any proposed changes to this Scheduling Order and any motions the parties
`anticipate filing during the trial.
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`2. 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).
`The patent owner must file any such response or motion to amend 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 arguments for patentability not raised in the
`response will be deemed waived.
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`3. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
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`4. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
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`5. 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)) by DUE DATE 4.
`c.
`Each party must file any request for oral argument (37 C.F.R.
`§ 42.70(a)) by DUE DATE 4. As noted above, DUE DATE 4 is not
`extendible with respect to a request for oral argument.
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`6. 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.
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`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
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`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
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`B. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. See 37 C.F.R. § 42.53(d)(2).
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`Cross-examination ends no later than a week before the filing
`2.
`date for any paper in which the cross-examination testimony is expected to
`be used. See id.
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`C. 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. at 48,768. 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.
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`D. MOTION TO AMEND
`
`Under 37 C.F.R. §§ 42.24 and 42.121, a motion to amend, if filed in
`this proceeding, as well as petitioner’s opposition to the motion to amend,
`each are limited to twenty-five (25) pages; patent owner’s reply to the
`opposition to the motion to amend is limited to twelve (12) pages; and the
`claim listing may be contained in an appendix to the motion to amend, and
`does not count toward the page limit of the motion. See Amendments to the
`Rules of Practice for Trials Before the Patent Trial and Appeal Board,
`80 Fed. Reg. 28,561, 28,565–66 (Final Rule) (May 19, 2015).
`Patent Owner also is reminded that it must confer with the Board
`before filing a Motion to Amend. 37 C.F.R. § 42.121(a). Patent Owner
`should contact the Board to request the conference in sufficient time to
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`ensure that the conference is conducted at least one week before DUE
`DATE 1.
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`PETITIONER’S REPLY
`E.
`Under 37 C.F.R. § 42.24(c), petitioner’s reply to patent owner’s
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`response is limited to twenty-five (25) pages. See Amendments to the Rules
`of Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
`at 28,565.
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`F.
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`PROTECTIVE ORDER & CONFIDENTIAL INFORMATION
`A protective order does not exist in a case until one is filed in the case
`and is approved by the Board. If a motion to seal is filed by either party, the
`proposed protective order should be presented as an exhibit to the motion.
`The parties are urged to operate under the Board’s default protective order,
`should that become necessary. See Default Protective Order, Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,771 (Appendix B). If the parties
`choose to propose a protective order deviating from the default protective
`order, they should submit the proposed protective order jointly. A marked-
`up comparison of the proposed and default protective orders should be
`presented as an additional exhibit to the motion to seal, so that difference
`can be understood readily. The parties should contact the Board if they
`cannot agree on the terms of the proposed protective order.
`The parties must file confidential information using the appropriate
`availability indicator in PRPS (e.g., “Board and Parties Only”), regardless of
`whose confidential information it is. It is the responsibility of the party
`whose confidential information is at issue, not necessarily the proffering
`party, to file the motion to seal.
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`Redactions should be limited strictly to isolated passages consisting
`entirely of confidential information. The thrust of the underlying argument
`or evidence must be clearly discernable from the redacted version.
`Information subject to a protective order will become public if
`identified in a final written decision in this proceeding. A motion to
`expunge the information will not necessarily prevail over the public interest
`in maintaining a complete and understandable file history. See Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,761.
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ............................................... upon request
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`DUE DATE 1 ...................................................................... October 13, 2015
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
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`DUE DATE 2 ....................................................................... January 11, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ....................................................................... February 9, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ..................................................................... February 23, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
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`DUE DATE 5 ........................................................................... March 1, 2016
`Response to observation
`Opposition to motion to exclude
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`DUE DATE 6 ........................................................................... March 8, 2016
`Reply to opposition to motion to exclude
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`DUE DATE 7 ......................................................................... March 22, 2016
`Oral argument (if requested)
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`IPR2015-00513
`Patent 8,631,935 B2
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`PETITIONER:
`
`Richard F. Giunta
`Jason M. Honeyman
`WOLF GREENFIELD & SACKS, P.C.
`RGuinta-PTAB@wolfgreenfield.com
`JHoneyman-PTAB@wolfgreenfield.com
`
`
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`PATENT OWNER:
`
`Christopher C. Campbell
`John R. Mills
`COOLEY LLP
`ccampbell@cooley.com
`jmills@cooley.com
`zpatdcdocketing@cooley.com
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