Paper 9
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: September 1, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`YEDA RESEARCH & DEVELOPMENT CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-00830
`Patent 8,969,302 B2
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: September 1, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`YEDA RESEARCH & DEVELOPMENT CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-00830
`Patent 8,969,302 B2
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`IPR2015-00830
`Patent 8,969,302 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).
`
`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. INITIAL CONFERENCE CALL
`
`The parties are directed to contact the Board within a month of this
`
`decision if there is a need to discuss proposed changes to this Scheduling
`
`Order or proposed motions. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the
`
`initial conference call).
`
`2
`
`
`
`IPR2015-00830
`Patent 8,969,302 B2
`
`
`2. 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.
`
`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.
`
`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.
`
`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)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
`
`DUE DATE 4.
`
`3
`
`
`
`IPR2015-00830
`Patent 8,969,302 B2
`
`
`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.
`
`7. DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`8. 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).
`
`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
`
`4
`
`
`
`IPR2015-00830
`Patent 8,969,302 B2
`
`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.
`
`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).
`
`E. COMMUNICATIONS WITH THE BOARD
`
`Except as otherwise provided in the Rules, Board authorization is
`
`required before filing a motion. 37 C.F.R. § 42.20(b). A party seeking to file
`
`a non-preauthorized motion should request a conference to obtain
`
`authorization to file the motion. Parties may request a conference with us by
`
`contacting the Board staff by e-mail at Trials@uspto.gov or by telephone at
`
`571-272-7822.
`
`Finally, we refer the parties to the instructions on the Board’s website
`
`at http://www.uspto.gov/ip/boards/bpai/prps.jsp regarding the proper use of
`
`email communication to the Board. Specifically, an email requesting a
`
`conference call should copy the other party, indicate generally the relief
`
`being requested or the subject matter of the conference call, state whether
`
`the opposing party opposes the request, and include multiple times when all
`
`parties are available. The email may not contain substantive argument. The
`
`parties also are reminded that they should discuss and attempt to resolve
`
`issues with each other first before requesting conference calls with the
`
`Board.
`
`
`
`5
`
`
`
`IPR2015-00830
`Patent 8,969,302 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................... Nov. 25, 2015
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ Feb. 17, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................ Mar. 17, 2016
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .............................................................................. Apr. 7, 2016
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ............................................................................ Apr. 21, 2016
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ Apr. 28, 2016
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ May 12, 2016
`
`Oral argument (if requested)
`
`
`
`6
`
`
`
`IPR2015-00830
`Patent 8,969,302 B2
`
`PETITIONER:
`
`Jeffrey W. Guise
`Wilson Sonsini Goodrich & Rosati
`jguise@wsgr.com
`
`
`Brandon M. White
`Perkins Coie LLP
`bmwhite@perkinscoie.com
`
`
`
`
`
`PATENT OWNER:
`
`Elizabeth J. Holland
`GOODWIN PROCTER LLP
`eholland@goodwinprocter.com
`
`William G. James
`wjames@goodwinprocter.com
`GOODWIN PROCTER LLP
`DG-Copaxone@goodwinprocter.com
`
`
`7
`
`
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