Trials@uspto.gov Paper 21
`571-272-7822 Entered: January 28, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FRESENIUS KABI USA LLC,
`Petitioner,
`
`v.
`
`CUBIST PHARMACEUTICALS LLC,
`Patent Owner.
`_____________
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)1
`______________
`
`
`
`Before BRIAN P. MURPHY, JON B. TORNQUIST, and
`TINA E. HULSE, Administrative Patent Judges.
`
`
`MURPHY, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`1 This Order will be entered in each case. The parties are not authorized to use this
`style of caption.
`
`
`571-272-7822 Entered: January 28, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FRESENIUS KABI USA LLC,
`Petitioner,
`
`v.
`
`CUBIST PHARMACEUTICALS LLC,
`Patent Owner.
`_____________
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)1
`______________
`
`
`
`Before BRIAN P. MURPHY, JON B. TORNQUIST, and
`TINA E. HULSE, Administrative Patent Judges.
`
`
`MURPHY, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`1 This Order will be entered in each case. The parties are not authorized to use this
`style of caption.
`
`
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`
`
`
`A. INITIAL CONFERENCE CALL
`
`No initial conference call is scheduled for this case. The parties are
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`encouraged to contact the Board to request a call if any issues arise during trial.
`
`The parties’ attention is directed to the following matters.
`
`1. Motion to Amend
`
`Patent Owner is reminded that it must confer with the Board before filing a
`
`Motion to Amend. 37 C.F.R. § 42.121(a). Patent Owner should contact the Board
`
`to request a conference in sufficient time to ensure that the conference is conducted
`
`at least two weeks before DUE DATE 1.
`
`Patent Owner and Petitioner are directed to the rules governing Motions to
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`Amend, with particular regard to applicable page limits. 37 C.F.R. §§ 42.24(a)(1),
`
`42.24(b)(3), 42.24(c)(3), 42.121(b).
`
`2. Confidential Information
`
`The parties must file confidential information using the appropriate
`
`availability indicator in PRPS (e.g., “Board and Parties Only”), regardless of
`
`whose confidential information it is. It is the responsibility of the party whose
`
`confidential information is at issue, not necessarily the proffering party, to file the
`
`motion to seal.
`
`A protective order does not take effect until a protective order is filed in the
`
`case and is approved by the Board. If a motion to seal is filed by either party, the
`
`proposed protective order should be presented as an exhibit to the motion. The
`
`parties are urged to operate under the Board’s default protective order, should that
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`become necessary. See Default Protective Order, Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012).
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`
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`2
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`
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`
`
`If the parties choose to propose a protective order deviating from the default
`
`protective order, they should submit the proposed protective order jointly. A
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`marked-up comparison of the proposed and default protective orders should be
`
`presented as an additional exhibit to the motion to seal, so that differences are
`
`highlighted. The parties should contact the Board if they cannot agree on the terms
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`of the proposed protective order.
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`a. Redactions
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`Redactions should be limited strictly to isolated passages consisting of
`
`confidential information. The thrust of the underlying argument or evidence must
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`be discernable from the redacted version.
`
`b. Confidential Information in Final Written Decisions
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`Information subject to a protective order will become public if identified in a
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`final written decision in this proceeding. A motion to expunge the information will
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`not necessarily prevail over the public interest in maintaining a complete and
`
`understandable file history. See Office Patent Trial Practice Guide, 77 Fed. Reg. at
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`48,761.
`
`B. 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 not later than the date set herein for DUE DATE 6).
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`A notice of the stipulation, identifying the changed due dates, must be filed with
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`the Board prior to any filing that depends on the stipulation for timeliness. The
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`parties may not stipulate to an extension of DUE DATES 6 and 7.
`
`
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`3
`
`
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`
`
`Regardless of whether the parties stipulate to a change of DUE DATE 4,
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`requests for oral argument must be filed no later than the date set forth in this order
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`for DUE DATE 4, for Board planning purposes.
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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 serve
`
`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 C, 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. DUE DATE 1
`
`The patent owner may file—
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`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
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`any arguments for patentability not raised in the response will be deemed waived.
`
`
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`4
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`
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`
`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
`
`opposition to any 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. Each party must file any motion for an observation on the cross-
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`examination testimony of a reply witness (see section D, below) by DUE
`
`DATE 4.
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`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
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`DATE 4.
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`5. DUE DATE 5
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`a. Each party must file any response to an observation on cross-examination
`
`testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude evidence by
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`DUE DATE 5.
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`5
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`
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`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
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`6. DUE DATE 6
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`Each party must file any reply to any opposition to a motion to exclude
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`evidence by DUE 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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`C. CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1. Cross-examination begins after any supplemental evidence relating to
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`direct testimony is due. 37 C.F.R. § 42.53(d)(2).
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`2. Cross-examination ends no later than a week before the filing date for any
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`paper in which the cross-examination testimony is expected to be used. Id.
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`D. 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. 48,755, 48,768 (Aug. 14,
`
`2012). The observation must be a concise statement of the relevance of precisely
`
`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, specific
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`and should not exceed a single, short paragraph.
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`6
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`
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`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`
`DUE DATE APPENDIX
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`
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`DUE DATE 1 ................................................................................. April 15, 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 ................................................................................. July 1, 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 29, 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 19, 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 .............................................................................. September 2, 2016
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 .............................................................................. September 9, 2016
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ............................................................................ September 21, 2016
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`Oral argument (if requested)
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`7
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`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`
`PETITIONER:
`
`Elizabeth J. Holland
`Cynthia Lambert Hardman
`Goodwin Procter LLP
`eholland@goodwinprocter.com
`chardman@goodwinprocter.com
`
`
`
`PATENT OWNER:
`
`Emily R. Whelan
`Andrej Barbic
`Gerard N. Devlin, Jr.
`Lisa A. Jakob
`Wilmer Cutler Pickering Hale and Dorr LLP
`emily.whelan@wilmerhale.com
`andrej.barbic@wilmerhale.com
`gerard.devlin@wilmerhale.com
`lisa.jakob@wilmerhale.com
`
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`8
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