Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 37 (IPR2015-00864)
`Paper 29 (IPR2015-00865)
`Entered: October 6, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACCORD HEALTHCARE INC., USA, ACCORD HEALTHCARE, INC.,
`INTAS PHARMACEUTICALS LTD., AMNEAL PHARMACEUTICALS
`LLC, AMNEAL PHARMACEUTICALS OF NEW YORK, LLC,
`AMNEAL PHARMACEUTICALS CO. INDIA PVT. LTD., APOTEX
`CORP., APOTEX INC., DR. REDDY’S LABORATORIES, LTD., DR.
`REDDY’S LABORATORIES, INC., GLENMARK GENERICS INC.,
`USA, GLENMARK GENERICS LTD., GLENMARK
`PHARMACEUTICALS LTD., PANACEA BIOTEC LTD., SUN PHARMA
`GLOBAL FZE, TEVA PHARMACEUTICALS USA, INC., ZYDUS
`PHARMACEUTICALS USA, INC., and CADILA HEALTHCARE LTD,
`
`Petitioner,
`v.
`DAIICHI SANKYO COMPANY, LTD. AND UBE INDUSTRIES, LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-00864 (Patent 8,404,703 B2)
` Case IPR2015-00865 (Patent 8,569,325 B2)1
`____________
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
` 1
`
` This Order addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single Order for entry in each case.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper 37 (IPR2015-00864)
`Paper 29 (IPR2015-00865)
`Entered: October 6, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACCORD HEALTHCARE INC., USA, ACCORD HEALTHCARE, INC.,
`INTAS PHARMACEUTICALS LTD., AMNEAL PHARMACEUTICALS
`LLC, AMNEAL PHARMACEUTICALS OF NEW YORK, LLC,
`AMNEAL PHARMACEUTICALS CO. INDIA PVT. LTD., APOTEX
`CORP., APOTEX INC., DR. REDDY’S LABORATORIES, LTD., DR.
`REDDY’S LABORATORIES, INC., GLENMARK GENERICS INC.,
`USA, GLENMARK GENERICS LTD., GLENMARK
`PHARMACEUTICALS LTD., PANACEA BIOTEC LTD., SUN PHARMA
`GLOBAL FZE, TEVA PHARMACEUTICALS USA, INC., ZYDUS
`PHARMACEUTICALS USA, INC., and CADILA HEALTHCARE LTD,
`
`Petitioner,
`v.
`DAIICHI SANKYO COMPANY, LTD. AND UBE INDUSTRIES, LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-00864 (Patent 8,404,703 B2)
` Case IPR2015-00865 (Patent 8,569,325 B2)1
`____________
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
` 1
`
` This Order addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single Order for entry in each case.
`
`
`
`IPR2015-00864 (8,404,703 B2)
`IPR2015-00865 (8,569,325 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
`
`
`
`IPR2015-00864 (8,404,703 B2)
`IPR2015-00865 (8,569,325 B2)
`
`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.
`
`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
`
`
`
`IPR2015-00864 (8,404,703 B2)
`IPR2015-00865 (8,569,325 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
`
`
`
`
`4
`
`
`
`IPR2015-00864 (8,404,703 B2)
`IPR2015-00865 (8,569,325 B2)
`
`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. 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
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`
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`IPR2015-00864 (8,404,703 B2)
`IPR2015-00865 (8,569,325 B2)
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ........................................................................... Nov. 23, 2015
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................. Jan. 29, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................ Feb. 29, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................ Mar. 21, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .............................................................................. Apr. 4, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ Apr. 11, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .............................................................................. May 2, 2016
`Oral argument (if requested)
`
`
`
`
`
`6
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`
`
`IPR2015-00864 (8,404,703 B2)
`IPR2015-00865 (8,569,325 B2)
`
`PETITIONER:
`
`Samuel S. Park
`spark@winston.com
`
`Azadeh S. Kokabi
`akokabi@sughrue.com
`
`Patrick C. Gallagher
`pcgallagher@duanemorris.com
`
`William L. Mentlik
`wmentlik@ldlkm.com
`
`Steven J. Moore
`steven.moore@withersworldwide.com
`
`John Winterle
`john.winterle@withersworldwide.com
`
`Hans-Peter Hoffman
`peter.hoffman@withersworldwide.com
`
`Alan Gardner
`alan.gardner@withersworldwide.com
`
`
`PATENT OWNER:
`
`Dov P. Grossman
`dgrossman@wc.com
`
`David M. Krinsky
`dkrinsky@wc.com
`
`
`
`
`
`7
`
`
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