Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: May 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NEOCHORD, INC.,
`Petitioner,
`
`v.
`
`UNIVERSITY OF MARYLAND, BALTIMORE and
`HARPOON MEDICAL, INC.,
`Patent Owner.
`
`Case IPR2016-00208
`Patent 7,635,386 B1
`
`Before SALLY C. MEDLEY, ERICA A. FRANKLIN, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`Entered: May 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NEOCHORD, INC.,
`Petitioner,
`
`v.
`
`UNIVERSITY OF MARYLAND, BALTIMORE and
`HARPOON MEDICAL, INC.,
`Patent Owner.
`
`Case IPR2016-00208
`Patent 7,635,386 B1
`
`Before SALLY C. MEDLEY, ERICA A. FRANKLIN, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`A. GENERAL INSTRUCTIONS
`
`1.
`
`Requests for an Initial Conference Call
`
`An initial conference call is not scheduled in this case. A party may
`
`request an initial conference call within 25 days after the institution of trial.
`
`A party requesting an initial conference call shall: (a) identify the proposed
`
`motions, if any, to be discussed during the call; and (b) propose two or more
`
`dates and times when both parties are available for the call. When an initial
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`conference call is scheduled in response to a request, the parties are directed
`
`to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66
`
`(Aug. 14, 2012), for guidance in preparing for the initial conference call and
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`should be prepared to discuss any proposed changes to the schedule in this
`
`proceeding.
`
`The University of Maryland, Baltimore has identified the exclusive
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`licensee, Harpoon Medical, Inc. (“Harpoon Medical”) as an additional real
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`party-in-interest. Paper 5, 2. Nevertheless, the University of Maryland,
`
`Baltimore, as the patent owner of record, is the sole respondent authorized to
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`file a Response to the Petition at this time. If Harpoon Medical wants to
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`participate in the proceedings in any manner, the University of Maryland,
`
`Baltimore must arrange a conference call with opposing counsel and the
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`Board. In any event, Harpoon Medical shall be bound by any judgment as to
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`patentability adverse to the University of Maryland, Baltimore.
`
`Cf. 37 C.F.R. § 42.73(d)(3).
`
`2.
`
`Protective Order
`
`A protective order will not be entered in this proceeding unless the
`
`parties file one and the Board approves it. The parties are encouraged to
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`adopt the Board’s default protective order if a protective order is necessary.
`
`2
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`See Default Protective Order, Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose to propose a
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`protective order deviating from the default protective order, they must
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`submit the proposed protective order along with a marked-up comparison of
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`the proposed and default protective orders showing the differences. If either
`
`party files a motion to seal before entry of a protective order, a proposed
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`protective order should be presented as an exhibit to the motion that has
`
`been discussed with the opposing party and, preferably, be jointly proposed.
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`If the protective order is not jointly proposed, the proponent of the order
`
`should identify where the parties differ in the proposed language of the
`
`order.
`
`The Board has a strong interest in promoting public accessibility to
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`the proceedings. If a party seeks to redact information from documents filed
`
`in this proceeding in accordance with a protective order, the redactions must
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`be limited to isolated passages consisting entirely of confidential
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`information, and the thrust of the underlying argument or evidence must
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`remain clearly discernible.
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`Information subject to a protective order will nevertheless become
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`public if identified in a final written decision in this proceeding. A motion
`
`to expunge information subject to a protective order will not prevail
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`necessarily 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 48,761.
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`3.
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`Depositions
`
`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,
`
`3
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`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.
`
`Whenever a party submits a deposition transcript as an exhibit in this
`
`proceeding, the submitting party shall file the full transcript of the deposition
`
`rather than excerpts of only those portions being cited. After a deposition
`
`transcript has been submitted as an exhibit, all parties shall cite to the filed
`
`exhibit rather than submitting another copy of the same transcript.
`
`4.
`
`Discovery Disputes
`
`Parties are encouraged to resolve disputes relating to discovery on
`
`their own and in accordance with the precepts of securing a just, speedy, and
`
`inexpensive resolution, as set forth in 37 C.F.R. § 42.1(b). To the extent that
`
`a dispute arises between the parties relating to discovery, the parties shall
`
`meet and confer to resolve such a dispute before contacting the Board. If
`
`attempts to resolve the dispute fail, a party may request a conference call
`
`with the Board and the other party in order to seek authorization to move for
`
`relief.
`
`In any request for a conference call with the Board to resolve a
`
`discovery dispute, the requesting party shall: (a) confirm that it has
`
`conferred in good faith with the other party in an effort to resolve the
`
`dispute; (b) identify with specificity the issues for which agreement has not
`
`been reached, but refrain from arguing the merits of the request; (c) identify
`
`the precise relief to be sought; and (d) propose two or more dates and times
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`when both parties are available for the call.
`
`4
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`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`
`5. Motions to Amend
`
`Patent Owner may file a motion to amend without prior authorization
`
`from the Board. Nevertheless, Patent Owner must confer with the Board
`
`before filing such a motion. 37 C.F.R. § 42.121(a). The parties are directed
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`to the Board’s website for representative decisions relating to Motions to
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`Amend, among other topics, available at:
`
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`
`6.
`
`Cross-Examination
`
`Except as the parties might otherwise agree, for each due date—
`
`a.
`
`Cross-examination begins after any supplemental
`
`evidence is due. 37 C.F.R. § 42.53(d)(2).
`
`b.
`
`Cross-examination ends no later than a week before the
`
`filing date for any paper in which the cross-examination testimony is
`
`expected to be used. Id.
`
`7. Motion for Observation on Cross-Examination
`
`A motion for observation on cross-examination provides the parties
`
`with a mechanism to draw the Board’s attention to relevant cross-
`
`examination testimony of a reply witness because no further substantive
`
`paper is permitted after the reply. See Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 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. Each observation
`
`should not exceed a single, short paragraph. The opposing party may
`
`respond to the observation. Any response must be equally concise and
`
`specific.
`
`5
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`
`8. Motion for Pro Hac Vice Admission
`
`The Board may recognize counsel pro hac vice during a proceeding
`
`upon a showing of good cause. 37 C.F.R. § 42.10(c). The parties are
`
`authorized in the Notice of Filing Date Accorded to Petition to file motions
`
`for pro hac vice admission. A pro hac vice motion may be filed no sooner
`
`than twenty one (21) days after service of the petition, and any opposition
`
`must be filed no later than one week after the filing of the underlying
`
`motion. No reply to any opposition shall be filed unless further authorized.
`
`6
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`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 no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
`
`be promptly filed. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7.
`
`In stipulating to different dates, the parties should consider the effect
`
`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-
`
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`
`evidence and cross-examination testimony (see section A.6, above).
`
`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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 any arguments for patentability not raised in
`
`the response will be deemed waived.
`
`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
`
`opposition to the motion to amend by DUE DATE 2.
`
`7
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`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`
`3. DUE DATE 3
`
`The patent owner must file any reply to the petitioner’s opposition to
`
`patent owner’s motion to amend by DUE DATE 3.
`
`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-examination testimony of a reply witness (see section A.7, above) by
`
`DUE DATE 4.
`
`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 DATE 4.
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`5. DUE DATE 5
`
`a.
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`Each party must file any response to an observation on
`
`cross-examination testimony by DUE DATE 5.
`
`b.
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`Each party must file any opposition to a motion to
`
`exclude evidence by DUE DATE 5.
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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
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`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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`
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`
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`8
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`
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`IPR2016-00208
`Patent 7,635,386 B1
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ..................................... UPON REQUEST
`
`DUE DATE 1 ........................................................................ August 15, 2016
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... November 7, 2016
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... December 5, 2016
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 .................................................................... December 19, 2016
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`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
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`Request for oral argument
`
`DUE DATE 5 .......................................................................... January 9, 2017
`
`Response to observation
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`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................ January 16, 2017
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`Reply to opposition to motion to exclude
`
`DUE DATE 7 ....................................................................... January 31, 2017
`
`Oral argument (if requested)
`
`9
`
`
`
`IPR2016-00208
`Patent 7,635,386 B1
`
`PETITIONER:
`Patterson Thuente Pedersen, P.A.
`Brad D. Pedersen
`Eric H. Chadwick
`Chad J. Wickman
`
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`wickman@ptslaw.com
`
`PATENT OWNER:
`Cooley LLP
`C. Scott Talbot
`Erik B. Milch
`Nancy A. Vashaw
`
`stalbot@cooley.com
`IPR2016-00208@cooley.com
`emilch@cooley.com
`nvashaw@cooley.com
`
`physical copy by MAIL to:
`Harpoon Medical, Inc.
`198 Log Canoe Circle
`Stevensville, MD 21666
`
`Harpoon Medical Inc.
`c/o William Niland, agent
`955 Nelson Place
`Arnold, MD 21012
`
`10
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