`Tel: 571-272-7822
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`Paper 56
`Entered: September 5, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC.,
`Petitioner,
`v.
`MARK A. BARRY,
`Patent Owner.
`
`Case IPR2015-00780
`Patent 7,670,358 B2
`Case IPR2015-00783
`Patent 7,776,072 B21
`
`
`
`
`Before DONNA M. PRAISS, BRIAN J. McNAMARA,
`and JEREMY M. PLENZLER, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`REMAND SCHEDULING ORDER
`
`
`1 This order is to be filed in each case. The parties are not authorized to use
`this style heading in any subsequent papers.
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`
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`Cases IPR2015-00780 and IPR2015-00783
`Patents 7,670,358 B2 and 7,776,072 B2
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`A. GENERAL INSTRUCTIONS
`1.
`Initial Conference Call
`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions that have not been authorized in this Order or other
`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
`preparing for the initial conference call). A request for an initial conference
`call shall include a list of proposed motions, if any, to be discussed during
`the call.
`Protective Order
`2.
`Any Protective Order already in effect in this proceeding shall remain
`in effect. No other protective order shall apply to this proceeding until the
`Board enters it.
`Redactions to documents filed in this proceeding should be limited to
`the minimum amount necessary to protect confidential information, and the
`thrust of the underlying argument or evidence must be clearly discernible
`from the redacted versions. We also advise the parties that information
`subject to a protective order may become public if identified in a final
`written decision in this proceeding, and that a motion to expunge the
`information will not necessarily prevail over the public interest in
`maintaining a complete and understandable file history. See Practice Guide
`48,761.
`Discovery Disputes
`3.
`The Board encourages parties to resolve disputes relating to discovery
`on their own. To the extent that a dispute arises between the parties relating
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`Cases IPR2015-00780 and IPR2015-00783
`Patents 7,670,358 B2 and 7,776,072 B2
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`to discovery, the parties must meet and confer to resolve such a dispute
`before contacting the Board. If attempts to resolve the dispute fail, a party
`may request a conference call with the Board.
`4.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, 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.
`5.
`Cross-Examination
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`Cross-examination ordinarily 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.
`6.
`Oral Argument
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Due Date Appendix.
`Unless the Board notifies the parties otherwise, oral argument, if requested,
`will be held at the USPTO headquarters in Alexandria. The parties may
`request that the oral argument instead be held at one of the USPTO Regional
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`Cases IPR2015-00780 and IPR2015-00783
`Patents 7,670,358 B2 and 7,776,072 B2
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`Offices in Detroit, Michigan, Dallas, Texas, Denver, Colorado, and San
`Jose, California.
`The parties should meet and confer, and jointly propose the parties’
`preference at the initial conference call, if requested. Alternatively, the
`parties may jointly file a paper stating their preference for the hearing
`location within one month of this order. Note that the Board may not be
`able to honor the parties’ preference of hearing location due to, among other
`things, the availability of hearing room resources and other circumstances..
`The Board will consider the location request and notify the parties
`accordingly if a request for change in location is granted.
`Seating in the Board’s hearing rooms may be limited, and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals will attend the argument on its behalf, the
`party should notify the Board as soon as possible, and no later than the
`request for oral argument. Parties should note that the earlier a request for
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
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`B. DUE DATES
`This order sets due dates for the parties to take action after institution
`of the proceeding. The parties may stipulate 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 an extension of DUE
`DATES 6 and 7, or to the requests for oral hearing.
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`Cases IPR2015-00780 and IPR2015-00783
`Patents 7,670,358 B2 and 7,776,072 B2
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`In stipulating 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 (§ 42.64(b)(2)), to conduct cross-examination
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
`1. DUE DATE 1
`Patent Owner may file—
`a. A response to the petition (37 C.F.R. § 42.120). If Patent Owner
`elects not to file a response, Patent Owner must arrange a conference call
`with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.
`b. A motion to amend the patent (37 C.F.R. § 42.121). Patent Owner
`may file a motion to amend without prior authorization from the Board.
`Nevertheless, Patent Owner must confer with the Board before filing such a
`motion. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent Owner
`should request a conference call with the Board no later than two weeks
`prior to DUE DATE 1. The parties are directed to the Board’s Guidance on
`Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV),
`and Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082
`(PTAB April 25, 2018) (Paper 13) (providing information and guidance on
`motions to amend).
`2. DUE DATE 2
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
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`Cases IPR2015-00780 and IPR2015-00783
`Patents 7,670,358 B2 and 7,776,072 B2
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`3. DUE DATE 3
`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may file a reply to the opposition to the motion to
`amend.
`4. DUE DATE 4
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`5. DUE DATE 5
`Either party may file an opposition to a motion to exclude evidence.
`6. DUE DATE 6
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`Either party may request that the Board hold a pre-hearing conference.
`7. DUE DATE 7
`The oral argument (if requested by either party) shall be held on this
`date. Approximately one month prior to the argument, the Board will issue
`an order setting the start time of the hearing and the procedures that will
`govern the parties’ arguments.
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`Cases IPR2015-00780 and IPR2015-00783
`Patents 7,670,358 B2 and 7,776,072 B2
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`DUE DATE APPENDIX
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`DUE DATE 1 .................................................................... November 9, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
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`DUE DATE 2 ....................................................................... January 11, 2019
`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 11, 2019
`Patent owner’s sur-reply to reply
`Patent owner’s reply to opposition to motion to amend
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`DUE DATE 4 ......................................................................... March 11, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`Request for oral argument (may not be extended by stipulation)
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`DUE DATE 5 ......................................................................... March 18, 2019
`Opposition to motion to exclude
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`DUE DATE 6 ......................................................................... March 25, 2019
`Reply to opposition to motion to exclude
`Request for prehearing conference
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`DUE DATE 7 ........................................................................... April 11, 2019
`Oral argument (if requested)
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`
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`Cases IPR2015-00780 and IPR2015-00783
`Patents 7,670,358 B2 and 7,776,072 B2
`
`PETITIONER:
`
`Jeff E. Schwartz
`Ryan N. Miller
`FOX ROTHSCHILD LLP
`jeschwartz@foxrothschild.com
`rmiller@foxrothschild.com
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`PATENT OWNER:
`
`John Alemanni
`Clay D. Holloway
`KILPATRICK TOWNSEND & STOCKTON LLP
`JAlemanni@kilpatricktownsend.com
`CHolloway@kilpatricktownsend.com
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