Trials@uspto.gov
`571-272-7822
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` Paper 5
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` Entered: 21 May 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`COALITION FOR AFFORDABLE DRUGS V LLC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`__________
`
`Case IPR2015-01136
`Patent 8,399,514 B2
`
`
`Before FRED E. McKELVEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`The Petition (Paper 2), and exhibits filed with the Petition, have been
`
`preliminarily reviewed.
`
`
`
`
`
`As a result of the review, the following is ordered.
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`I. Styling of Papers
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`In future papers, the style of the paper shall not exceed one line, e.g.,
`
`“Preliminary Response,” “Patent Owner’s Merits Response,” and
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`“Petitioner’s Merits Reply.”
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 5
`
`
` Entered: 21 May 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`COALITION FOR AFFORDABLE DRUGS V LLC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`__________
`
`Case IPR2015-01136
`Patent 8,399,514 B2
`
`
`Before FRED E. McKELVEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`The Petition (Paper 2), and exhibits filed with the Petition, have been
`
`preliminarily reviewed.
`
`
`
`
`
`As a result of the review, the following is ordered.
`
`I. Styling of Papers
`
`In future papers, the style of the paper shall not exceed one line, e.g.,
`
`“Preliminary Response,” “Patent Owner’s Merits Response,” and
`
`“Petitioner’s Merits Reply.”
`
`
`
`IPR2015-01136
`Patent 8,399,514 B2
`
`
`
`II. Exhibits
`
`
`
`
`
`
`
`The exhibits filed with the Petitioner are not properly labeled.
`
`The exhibits contain a cover sheet not authorized by the rules.
`
`The exhibits should be labeled with a label appearing at the right-hand
`
`bottom corner on the first page of the exhibit.
`
`To the extent that a label obscures material on the first page of the
`
`exhibit, a duplicate first page should be included. 37 C.F.R. § 42.63.
`
`
`
`Petitioner is required to refile its exhibits with a proper label and
`
`without first page cover sheets.
`
`Replacement exhibits should be labeled with the exhibit number
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`assigned by Petitioner with an “A” added, e.g., Exhibit 1001A to replace
`
`Exhibit 1001.
`
`
`
`
`
`
`
`An example of a proper exhibit label at this point would be
`
`Coalition Exhibit 1001A
`Coalition v. Biogen
`IPR2015-01136
`
`III. Exhibit 1003
`
`Exhibit 1003 consists of many pages the only relevant page appearing
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`to be p574.
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`When refiled as Exhibit 1003A, the exhibit should be limited to those
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`pages actually mentioned in the Petition.
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`IV. Exhibit 1005
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`The style of a declaration should not include an exhibit number.
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` 2
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`IPR2015-01136
`Patent 8,399,514 B2
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`
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`When refiled as Exhibit 1005A, the exhibit number should not appear
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`in the style, i.e., the style should be limited to one line and could read
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`DECLARATION OF STEVEN E. LINBERG, Ph. D.
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`V. Exhibit 1007 and similar exhibits
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`
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`Exhibit 1007 and other exhibits consist of a document to which are
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`attached various exhibits.
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`When refiled, Exhibit 1007A should include as a first page a table of
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`contents of the exhibit, i.e.:
`
`Amendment
`Electronic Acknowledgement Receipt (which probably should
`
`be eliminated as irrelevant)
`Exhibit 1 (identify nature of exhibit)
`Exhibit 2 (identify nature of exhibit)
`Exhibit A (identify nature of exhibit)
`Exhibit B (identify nature of exhibit)
`Exhibit C (identify nature of exhibit)
`Exhibit D (identify nature of exhibit)
`Exhibit E (identify nature of exhibit)
`Exhibit 3
`Transmittal letter
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`The pages of Exhibit 1007A, and other like exhibits, should be
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`renumbered at the bottom of each page from 1 to “n” (or Page 1 of “n”) and
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`the page number should appear in the Table of Contents.
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`
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`Other exhibits suffer the same problem and should be refiled with a
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`Table of Contents as the first page, e.g., at least Exhibits 1009, 1011, 1020,
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` 3
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`and 1025.
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`IPR2015-01136
`Patent 8,399,514 B2
`
`
`
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`With respect to an exhibit having a table of contents, any Exhibit list
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`should also include the Table of Contents to make it easy for the Patent
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`Owner and the Board to locate an exhibit within an exhibit.
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`
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`As presented it is difficult for the Patent Owner and the Board to refer
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`to pages of exhibits.
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`VI. Documents with many pages
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`The parties are advised that when a large document consisting of
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`many pages, e.g., a file wrapper, is offered in evidence, the only portion of
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`the document which will be considered by the Board are the specific pages
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`mentioned in a motion, opposition, reply, or other authorized paper.
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`
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`Pages of a large document not cited or referenced in a motion,
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`opposition, reply or other authorized paper will not be considered as having
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`been admitted into evidence.
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`VII. Petition
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`
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`An Amended Petition shall be refiled, styled as “First Amended
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`Petition,” without any substantive change except that to the extent that the
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`First Amended Petition refers to refiled exhibits, it shall include the exhibit
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`number and renumbered page of the exhibit.
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`
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`To the extent that an exhibit mentioning another exhibit is refiled, the
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`referred to exhibit may be changed via handwriting from Exhibit 100x to
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`Exhibit 100xA and the refiled exhibit need not be reexecuted if it is a
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`declaration.
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`VIII. Exhibit numbers in papers
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`
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`In future papers, exhibit numbers should appear in bold. See for
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`example, Petition, page 4:11–12 referring to Ex. 1003 and Ex. 1020.
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` 4
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`IPR2015-01136
`Patent 8,399,514 B2
`
`
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`IX. Abbreviations
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`
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`The parties are required to maintain and file a list of abbreviations
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`used in papers filed in this case.
`
`The list may be similar to a list of Exhibits, e.g.:
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`Abbreviation
`
`Definition
`
`POSITA
`
`Person of ordinary skill in the art
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`
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`
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`X. Time for Taking Action
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`All papers and exhibits required to be filed this order are due on or
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`before 9 June 2015.
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` 5
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`IPR2015-01136
`Patent 8,399,514 B2
`
`
`FOR PETITIONER:
`
`Robert Hahl
`rhahl@neifeld.com
`
`Robert Mihail
`rmihail@neifeld.com
`
`
`FOR PATENT OWNER:
`
`JONES DAY
`222 EAST 41st ST.
`NEW YORK, NY 10017
`
` 6
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