Trials@uspto.gov Paper 20
`Tel: 571-272-7822
`
`Entered: July 28, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PAR PHARMACEUTICAL, INC. and AMNEAL
`PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`_____________
`
`Case IPR2015-00548
`Patent 7,895,059 B2
`______________
`
`
`
`
`
`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL,
`and BRIAN P. MURPHY, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Entered: July 28, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PAR PHARMACEUTICAL, INC. and AMNEAL
`PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`_____________
`
`Case IPR2015-00548
`Patent 7,895,059 B2
`______________
`
`
`
`
`
`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL,
`and BRIAN P. MURPHY, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2015-00548
`Patent 7,895,059 B2
`
`A.
`
`INITIAL CONFERENCE CALL
`No initial conference call is scheduled for this case. The parties are
`encouraged to contact the Board to request a call if any issues arise during
`trial. The parties’ attention is directed to the following matters.
`1. Motion to Amend
`Patent Owner 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 a conference in sufficient time to ensure that the
`conference is conducted at least one week before DUE DATE 1.
`Patent Owner and Petitioner are directed to the revised rules
`governing Motions to Amend. 37 C.F.R. §§ 42.24(a)(1), 42.24(c),
`42.121(b).
`2. Confidential Information
`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.
`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. 48,756, App. B (Aug. 14, 2012).
`If the parties choose to propose a protective order deviating from the
`default protective order, they should submit the proposed protective order
`
`
`
`2
`
`
`
`IPR2015-00548
`Patent 7,895,059 B2
`
`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 differences are highlighted. The parties should contact the Board if they
`cannot agree on the terms of the proposed protective order.
`a. Redactions
`Redactions should be limited strictly to isolated passages consisting of
`confidential information. The thrust of the underlying argument or evidence
`must be discernable from the redacted version.
`b. Confidential Information in Final Written Decisions
`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.
`
`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 not later than the date set herein for
`DUE DATE 6). A notice of the stipulation, identifying the changed due
`dates, must be filed with the Board prior to any filing that depends on the
`stipulation for timeliness. 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, requests for oral argument must be filed no later than the date set forth in
`this order for DUE DATE 4, for Board planning purposes.
`
`
`
`3
`
`
`
`IPR2015-00548
`Patent 7,895,059 B2
`
`
`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
`serve 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 C, 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 attorneys’ fees
`incurred by any 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).
`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.
`
`
`
`4
`
`
`
`IPR2015-00548
`Patent 7,895,059 B2
`
`2. DUE DATE 2
`
`The petitioner must file any reply to the patent owner’s response and
`opposition to any motion to amend by DUE DATE 2.
`
`3. 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.
`
`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 D, 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.
`
`
`
`5
`
`
`
`IPR2015-00548
`Patent 7,895,059 B2
`
`6. DUE DATE 6
`
`Each party must file any reply to any opposition to 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 relating
`to direct testimony 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. 48,755, 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, specific
`and should not exceed a single, short paragraph.
`6
`
`
`
`
`
`IPR2015-00548
`Patent 7,895,059 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ...................................................................... October 30, 2015
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... January 29, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... February 26, 2016
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ......................................................................... March 18, 2016
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ............................................................................. April 1, 2016
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................. April 8, 2016
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................... April 19, 2016
`
`Oral argument (if requested)
`
`
`
`7
`
`
`
`IPR2015-00548
`Patent 7,895,059 B2
`
`
`
`
`FOR PETITIONERS:
`
`Aziz Burgy
`Aziz.Burgy@arentfox.com
`
`Bradford C. Frese
`Bradford.Frese@arentfox.com
`
`
`
`FOR PATENT OWNER:
`Francis Cerrito
`nickcerrito@quinnemanuel.com
`
`Evangeline Shih
`evangelineshih@quinnemanuel.com
`
`Frank C. Calvosa
`frankcalvosa@quinnemanuel.com
`
`John Biernacki
`jvbiernacki@jonesday.com
`
`8
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