Paper 20
`Date: December 31, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ELEKTA, INC.,
`Petitioner,
`
`v.
`
`VARIAN MEDICAL SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01401
`Patent 7,945,021 B2
`____________
`
`
`Before BRIAN J. MCNAMARA, PATRICK M. BOUCHER, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`Date: December 31, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ELEKTA, INC.,
`Petitioner,
`
`v.
`
`VARIAN MEDICAL SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01401
`Patent 7,945,021 B2
`____________
`
`
`Before BRIAN J. MCNAMARA, PATRICK M. BOUCHER, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2015-01401
`Patent 7,945,021 B2
`
`A. GENERAL INSTRUCTIONS
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`
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`1. Requests for an Initial Conference Call
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`
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`Unless at least one of the parties requests otherwise, we will not conduct an
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`initial conference call as described in the Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). In lieu of such a call, we instruct
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`the parties as follows:
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`(1) If a party wishes to request an initial conference call, that party shall
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`request the call no later than 25 days after the institution of trial;
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`(2) A request for a conference call shall include: (a) a list of proposed
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`motions, if any, to be discussed during the call and (b) a list of dates and
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`times when the parties are available for the call; and
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`(3) The parties shall be prepared to discuss during the initial conference call
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`their concerns, if any, relating to the schedule in this proceeding as set
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`forth below.
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`Absent good cause shown, we will not conduct an initial conference call later than
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`30 days after the institution of a trial.
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`2. Protective Order
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`A protective order does not exist in this proceeding unless the parties file
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`one and the Board approves it. If either party files a motion to seal before entry of
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`a protective order, a jointly proposed protective order should be presented as an
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`exhibit to the motion. We encourage the parties to adopt the Board’s default
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`protective order if they conclude that a protective order is necessary. See Default
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`Protective Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B
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`(Aug. 14, 2012). If the parties choose to propose a protective order deviating from
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`the default protective order, they must submit the proposed protective order jointly
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`Case IPR2015-01401
`Patent 7,945,021 B2
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`along with a marked-up comparison of the proposed and default protective orders
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`showing the differences.
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`The Board has a strong interest in the public availability of the proceedings.
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`We advise the parties that redactions to documents filed in this proceeding should
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`be limited strictly to isolated passages consisting entirely of confidential
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`information, and that the thrust of the underlying argument or evidence must be
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`clearly discernible from the redacted versions. We also advise the parties that
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`information subject to a protective order will become public if identified in a final
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`written decision in this proceeding, and that a motion to expunge the information
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`will not necessarily prevail over the public interest in maintaining a complete and
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`understandable file history. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
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`48,761.
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`3. Motions to Amend
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`Patent Owner may file a motion to amend without prior authorization from the
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`Board. Nevertheless, Patent Owner must confer with the Board before filing such a
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`motion. See 37 C.F.R. § 42.121(a). Patent Owner should arrange for a conference
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`call with the panel and opposing counsel at least one week before DUE DATE 1 in
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`order to satisfy the conferral requirement. We direct the parties to the Board’s
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`website for representative decisions relating to Motions to Amend among other
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`topics. The parties may access these representative decisions at:
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`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
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`4. Discovery Disputes
`
`The panel encourages parties to resolve disputes relating to discovery on
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`their own and in accordance with the precepts set forth in 37 C.F.R. § 42.1(b). To
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`the extent that a dispute arises between the parties relating to discovery, the parties
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`shall meet and confer to resolve such a dispute before contacting the Board. If
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`Patent 7,945,021 B2
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`attempts to resolve the dispute fail, a party may request a conference call with the
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`Board and the other party in order to seek authorization to move for relief.
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`In any request for a conference call with the Board to resolve a discovery
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`dispute, the requesting party shall: (a) certify that it has conferred with the other
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`party in an effort to resolve the dispute; (b) identify with specificity the issues for
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`which agreement has not been reached; (c) identify the precise relief to be sought;
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`and (d) propose specific dates and times at which both parties are available for the
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`conference call.
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`5. Depositions
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`The parties are advised that the Testimony Guidelines appended to the
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012)
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`(Appendix D), apply to this proceeding. The Board may impose an appropriate
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`sanction for failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
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`example, reasonable expenses and attorneys’ fees incurred by any party may be
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`levied on a person who impedes, delays, or frustrates the fair examination of a
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`witness.
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`Whenever a party submits a deposition transcript as an exhibit in this
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`proceeding, the submitting party shall file the full transcript of the deposition rather
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`than excerpts of only those portions being cited. After a deposition transcript has
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`been submitted as an exhibit, all parties who subsequently cite to portions of the
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`transcript shall cite to the first-filed exhibit rather than submitting another copy of
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`the same transcript.
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`6. 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 due.
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`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 date for
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`
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`any paper in which the cross-examination testimony is expected to be used. Id.
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`7. Motion for Observation on Cross-Examination
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`A motion for observation on cross-examination provides the parties with a
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`mechanism to draw the Board’s attention to relevant cross-examination testimony
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`of a reply witness because no further substantive paper is permitted after the reply.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
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`2012). The observation must be a concise statement of the relevance of precisely
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`identified testimony to a precisely identified argument or portion of an exhibit.
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`Each observation should not exceed a single, short paragraph. The opposing party
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`may respond to the observation. Any response must be equally concise and
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`specific.
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`B. DUE DATES
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`This order sets due dates for the parties to take action after institution of the
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`proceeding. The parties may stipulate to different dates for DUE DATES 1
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`through 5 (earlier or later, but no later than DUE DATE 6). A notice of the
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`stipulation, specifically identifying the changed due dates, must be promptly filed.
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`The parties may not stipulate to an extension of DUE DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect of the
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`stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement
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`evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.
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`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
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`examination testimony.
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`1. DUE DATE 1
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`The patent owner may file—
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`a.
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`A response to the petition (37 C.F.R. § 42.120), and
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`Case IPR2015-01401
`Patent 7,945,021 B2
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`b.
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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 must
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`arrange a conference call with the parties and the Board. The patent owner is
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`cautioned that any arguments for patentability not raised in the response will be
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`deemed waived.
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`2. 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. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to patent
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`owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the cross-
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`examination testimony of a reply witness (see section A.8, above) by DUE
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`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 DUE
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`DATE 4.
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`5. DUE DATE 5
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`a.
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`Each party must file any reply to a petitioner 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 evidence
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`by DUE DATE 5.
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`Case IPR2015-01401
`Patent 7,945,021 B2
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by DUE
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`DATE 6.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE DATE 7.
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`Case IPR2015-01401
`Patent 7,945,021 B2
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`DUE DATE APPENDIX
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`DUE DATE 1 .......................................................................... March 24, 2016
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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 ............................................................................. June 16, 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 .............................................................................. July 14, 2016
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ........................................................................... August 4, 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 ......................................................................... August 18, 2016
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ......................................................................... August 25, 2016
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ......................................................................... August 31, 2016
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`Oral argument (if requested)
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`8
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`Case IPR2015-01401
`Patent 7,945,021 B2
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`PETITIONER:
`
`Theresa M. Gillis
`Amanda K. Streff
`Sharon A. Israel
`MAYER BROWN LLP
`tgillis@mayerbrown.com
`astreff@mayerbrown.com
`sisrael@mayerbrown.com
`ElektaIPR@mayerbrown.com
`
`
`
`PATENT OWNER:
`
`Heidi Keefe
`COOLEY LLP
`zIPR2015-01401@cooley.com
`
`Jeremy Duggan
`Joseph Greco
`BECK, BISMONTE & FINLEY, LLP
`jduggan@becklip.com
`jgreco@becklip.com
`
`
`
`9
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