Trials@uspto.gov Paper 16
`Tel: 571-272-7822
`
`
`
` Entered: September 2, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`STRYKER CORPORATION,
`Petitioner,
`
`v.
`
`KARL STORZ ENDOSCOPY-AMERICA, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00677
`Case IPR2015-006781
`Patent 8,069,420 B2
`_______________
`
`
`
`Before BRYAN F. MOORE, BARRY L. GROSSMAN, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`1 We use this caption in this paper to indicate that this Order applies to, and is
`entered in, both cases. The parties are not authorized to use this caption.
`
`
`Tel: 571-272-7822
`
`
`
` Entered: September 2, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`STRYKER CORPORATION,
`Petitioner,
`
`v.
`
`KARL STORZ ENDOSCOPY-AMERICA, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00677
`Case IPR2015-006781
`Patent 8,069,420 B2
`_______________
`
`
`
`Before BRYAN F. MOORE, BARRY L. GROSSMAN, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`1 We use this caption in this paper to indicate that this Order applies to, and is
`entered in, both cases. The parties are not authorized to use this caption.
`
`
`
`IPR2015-00677
`IPR2015-00678
`Patent 8,069,420 B2
`
`
`NO INITIAL CONFERENCE CALL
`
`An initial conference call has not been scheduled. The parties are directed to
`
`contact the Board immediately to request a call if they have any questions or
`
`concerns about the schedule that the parties cannot resolve within the guidelines
`
`stated below. In lieu of an initial conference call, we remind the parties of the
`
`following matters and Board procedures.
`
`1. Motion to Amend Conference
`
`The Patent Owner 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 ensure that the conference is conducted at least
`
`one week before DUE DATE 1.
`
`2. Confidential Information
`
`A protective order does not exist in this case until requested by a party and
`
`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. If a protective
`
`order is requested, the parties are encouraged to use the Board’s default protective
`
`order. See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, App. B (Aug. 14, 2012).
`
`3. Testimony Guidelines
`
`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.
`
`
`
`2
`
`
`
`IPR2015-00677
`IPR2015-00678
`Patent 8,069,420 B2
`
`
`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.
`
`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).
`
`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).
`
`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.
`
`2. 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.
`
`
`
`3
`
`
`
`IPR2015-00677
`IPR2015-00678
`Patent 8,069,420 B2
`
`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 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.
`
`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.
`
`B. 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).
`
`
`
`4
`
`
`
`IPR2015-00677
`IPR2015-00678
`Patent 8,069,420 B2
`
`
`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.
`
`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. 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.
`
`D. MOTION TO AMEND
`
`
`
`Notwithstanding the page limits set forth in 37 C.F.R. § 42.24, we hereby
`
`expand those limits for the following papers: 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 37 C.F.R. § 42.5(b).
`
`E.
`
`PETITIONER’S REPLY
`
`
`
`Notwithstanding the page limit set forth in 37 C.F.R. § 42.24(c), petitioner’s
`
`reply brief to patent owner response is limited to twenty-five (25) pages. See 37
`
`C.F.R. § 42.5(b).
`
`
`
`5
`
`
`
`IPR2015-00677
`IPR2015-00678
`Patent 8,069,420 B2
`
`
`
`
`DUE DATE APPENDIX
`
`
`
`DUE DATE 1 .............................................................................. Dec. 4, 2015
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .............................................................................. Mar. 4, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .............................................................................. Apr. 4, 2016
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ Apr. 25, 2016
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .............................................................................. May 9, 2016
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ May 16, 2016
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ May 26, 2016
`
`Oral argument (if requested)
`
`
`
`6
`
`
`
`
`
`IPR2015-00677
`IPR2015-00678
`Patent 8,069,420 B2
`
`For PETITIONER:
`
`Robert Surrette
`bsurrette@mcandrews-ip.com
`
`Merle Elliott
`melliott@mcandrews-ip.com
`
`Christopher Scharff
`cscharff@mcandrews-ip.com
`
`Caroline Teichner
`cteichner@mcandrews-ip.com
`
`For PATENT OWNER:
`
`Wesley Whitmyer
`litigation@whipgroup.com
`
`Michael Kosma
`mkosma@whipgroup.com
`
`Michael Lavine
`mlavine@whipgroup.com
`
`
`
`7
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