Trials@uspto.gov
`571-272-7822
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`Paper: 11
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`Entered: September 15, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AKERMIN, INC.,
`Petitioner,
`
`v.
`
`CO2 SOLUTIONS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00880
`Patent 8,329,458 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, JON B. TORNQUIST, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
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`SCHEDULING ORDER
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`A. DUE DATES
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`
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`This order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate to different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be promptly filed. The parties may not stipulate to an extension of DUE
`
`DATES 6 and 7.
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`571-272-7822
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`Paper: 11
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`
`
`Entered: September 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AKERMIN, INC.,
`Petitioner,
`
`v.
`
`CO2 SOLUTIONS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00880
`Patent 8,329,458 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, JON B. TORNQUIST, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`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.
`
`
`
`IPR2015-00880
`Patent 8,329,458 B2
`
`
`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see section B, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,772
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`(Aug. 14, 2012) (Appendix D), apply to this proceeding. The Board may
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`impose an appropriate sanction for failure to adhere to the Testimony
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`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`1. INITIAL CONFERENCE CALL
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`The parties are directed to contact the Board within a month of entry
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`of this Scheduling Order if there is a need to discuss proposed changes to
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`this Scheduling Order or proposed motions. See Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in
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`preparing for the initial conference call).
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`2. DUE DATE 1
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`The patent owner may file—
`
`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by DUE
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`DATE 1. If the patent owner elects not to file anything, the patent owner
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`must arrange a conference call with the parties and the Board. The patent
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`2
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`
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`IPR2015-00880
`Patent 8,329,458 B2
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`owner is cautioned that any arguments for patentability not raised in the
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`response will be deemed waived.
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`3. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`4. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`5. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below) by
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`DUE DATE 4.
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`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
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`DUE DATE 4.
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`6. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`7. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`3
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`
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`IPR2015-00880
`Patent 8,329,458 B2
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`8. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`B. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
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`concise statement of the relevance of precisely identified testimony to a
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`precisely identified argument or portion of an exhibit. Each observation
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`should not exceed a single, short paragraph. The opposing party may
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`respond to the observation. Any response must be equally concise and
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`specific.
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`D. MOTION TO AMEND
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`Under 37 C.F.R. §§ 42.24 and 42.121, a motion to amend, if filed in
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`this proceeding, as well as petitioner’s opposition to the motion to amend,
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`each are limited to twenty-five (25) pages; patent owner’s reply to the
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`4
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`
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`IPR2015-00880
`Patent 8,329,458 B2
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`opposition to the motion to amend is limited to twelve (12) pages; and the
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`claim listing may be contained in an appendix to the motion to amend, and
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`does not count toward the page limit of the motion. See Amendments to the
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`Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80
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`Fed. Reg. 28,561, 28,565–66 (Final Rule) (May 19, 2015).
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`The Patent Owner is reminded that it must confer with the Board
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`before filing a motion to amend. 37 C.F.R. § 42.121(a). Patent Owner
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`should contact the Board to request the conference in sufficient time to
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`ensure that the conference is conducted at least one week before DUE
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`DATE 1.
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`E. PETITIONER’S REPLY
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`Under 37 C.F.R. § 42.24(c), petitioner’s reply brief to patent owner
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`response is limited to twenty-five (25) pages. See Amendments to the Rules
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`of Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
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`at 28,565.
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`5
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`
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`IPR2015-00880
`Patent 8,329,458 B2
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ............................................ Not Required
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`DUE DATE 1 .................................................................. December 15, 2015
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 ........................................................................ March 15, 2016
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 .......................................................................... April 15, 2016
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 .............................................................................. May 6, 2016
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ............................................................................ May 20, 2016
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ............................................................................ May 27, 2016
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ............................................................................. June 9, 2016
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`Oral argument (if requested)
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`6
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`IPR2015-00880
`Patent 8,329,458 B2
`
`
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`PETITIONER:
`
`Marc Vander Tuig
`Janet Hendrickson
`Kathleen Petrillo
`Robert Evans
`SENNIGER POWERS LLP
`mvandertuig@senniger.com
`kpetrillo@senniger.com
`kpetrillo@senniger.com
`revans@senniger.com
`
`PATENT OWNER:
`
`Sandip Patel
`Amanda Antons
`Steven Parks
`MARSHALL GERSTEIN & BORUN LLP
`mvandertuig@senniger.com
`aantons@marshallip.com
`sparks@marshallip.com
`
`
`
`
`7
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