`571-272-7822
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`Paper 19
`Entered: August 7, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_________________________
`
`Case IPR2015-00902 (Patent 8,669,290 B2)
`Case IPR2015-00903 (Patent 8,129,431 B2)1
`________________________
`
`Before GRACE KARAFFA OBERMANN, Administrative Patent Judge.
`
`OBERMANN, Administrative Patent Judge.
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`SCHEDULING ORDER
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`1 This order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
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`
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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`A. DUE DATES
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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
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`DATES 6 and 7.
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`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 this
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`decision if there is a need to discuss proposed changes to this Scheduling
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`Order or proposed motions. See Office Patent Trial Practice Guide, 77 Fed.
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`2
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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`Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the
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`initial conference call).
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`2. ADR STATEMENT
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`
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`The parties are encouraged to discuss promptly alternative means for
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`resolving their disputes regarding the subject matter of this proceeding. To
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`advance the opportunities for early disposition, petitioner is encouraged to
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`notify the Board, by the due date identified in the Appendix to this Order,
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`that the parties have conferred regarding alternative dispute resolution and
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`whether the parties have reached any agreements.
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`3. DUE DATE 1
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`The patent owner may file—
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`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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`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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`4. 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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`3
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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`5. 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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`6. 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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`7. 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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`8. 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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`9. 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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`4
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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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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`
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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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`opposition to the motion to amend is limited to twelve (12) pages; and the
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`5
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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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,
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`80 Fed. Reg. 28,561, 28,565–66 (Final Rule) (May 19, 2015).
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`E.
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`PETITIONER’S REPLY
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`
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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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`6
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ............................................ Not Required
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`ADR STATEMENT DUE ..................................................... October 7, 2015
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`DUE DATE 1 .................................................................... November 9, 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 ..................................................................... February 8, 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 .......................................................................... March 7, 2016
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ........................................................................ March 24, 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 ............................................................................ April 4, 2016
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 .......................................................................... April 10, 2016
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`Reply to opposition to motion to exclude
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`7
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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`DUE DATE 7 .......................................................................... April 19, 2016
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`Oral argument (if requested)
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`8
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`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00902 (Patent 8,129,431 B2)
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`PETITIONER:
`Jitendra Malik
`Bryan L. Skelton
`Lance Soderstrom
`ALSTON & BIRD LLP
`Jitty.Malik@alston.com
`bryan.skelton@alston.com
`lance.soderstrom@alston.com
`
`
`
`PATENT OWNER:
`Bryan Diner
`M. Andrew Holtman
`Justin Hasford
`Jonathan R. Stroud
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`bryan.diner@finnegan.com
`andy.holtman@finnegan.com
`justin.hasford@finnegan.com
`jonathan.stroud@finnegan.com
`joshua.goldberg@finnegan.com
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