Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
`
` Paper 8
`Entered: June 28, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANOFI-AVENTIS U.S. LLC and
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Petitioners,
`
`v.
`
`ASTRAZENECA PHARMACEUTICALS LP and
`AMYLIN PHARMACEUTICALS, LLC,
`Patent Owners.
`____________
`
`Cases IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)1
`_______________
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
` 1
`
` This order addresses issues that are the same in the identified cases.
`We exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`each proceeding, provided that such heading includes a footnote attesting
`that “the word-for-word identical paper is filed in each proceeding identified
`in the heading.”
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
`
` Paper 8
`Entered: June 28, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SANOFI-AVENTIS U.S. LLC and
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Petitioners,
`
`v.
`
`ASTRAZENECA PHARMACEUTICALS LP and
`AMYLIN PHARMACEUTICALS, LLC,
`Patent Owners.
`____________
`
`Cases IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)1
`_______________
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
` 1
`
` This order addresses issues that are the same in the identified cases.
`We exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`each proceeding, provided that such heading includes a footnote attesting
`that “the word-for-word identical paper is filed in each proceeding identified
`in the heading.”
`
`
`
`
`
`IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)
`
`
`A. 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
`notice of the stipulation, specifically identifying the changed due dates, must
`be promptly filed. The parties may not stipulate to an extension of DUE
`DATES 6 and 7.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`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 B, 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) (“Trial Practice Guide”) (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. INITIAL CONFERENCE CALL
`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions. See Trial Practice Guide, 77 Fed. Reg. at 48,765–66
`(providing guidance in preparing for the initial conference call).
`
`
`
`2
`
`
`
`IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)
`2. DUE DATE 1
`The patent owner may file—
`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 any arguments for patentability not raised in
`the response will be deemed waived.
`3. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`4. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to
`the patent owner’s motion to amend by DUE DATE 3.
`5. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section C, below) 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.
`
`
`
`3
`
`
`
`IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)
`6. DUE DATE 5
`a.
`Each party must file any response to an observation on cross-
`examination testimony by DUE DATE 5.
`b.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 5.
`7. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`8. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`B. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`2.
`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.
`C. 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 Trial Practice Guide, 77 Fed. Reg. at
`48,768. 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.
`4
`
`
`
`
`
`IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)
`The opposing party may respond to the observation. Any response must be
`equally concise and specific.
`D. COMMUNICATIONS WITH THE BOARD
`Except as otherwise provided in the Rules, Board authorization is
`required before filing a motion. 37 C.F.R. § 42.20(b). A party seeking to file
`a non-preauthorized motion should request a conference to obtain
`authorization to file the motion. Parties may request a conference with us by
`contacting the Board staff by e-mail at Trials@uspto.gov or by telephone at
`571-272-7822.
`An email requesting a conference call should copy the other party,
`indicate generally the relief being requested or the subject matter of the
`conference call, state whether the opposing party opposes the request, and
`include multiple times when all parties are available. The email may not
`contain substantive argument. The parties also are reminded that they should
`discuss and attempt to resolve issues with each other first before requesting
`conference calls with the Board.
`
`
`
`
`5
`
`
`
`IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)
`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................. September 19, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... December 12, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ....................................................................... January 10, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ....................................................................... January 31, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ..................................................................... February 14, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ..................................................................... February 22, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................... March 7, 2017
`Oral argument (if requested)
`
`
`
`
`6
`
`
`
`IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)
`
`PETITIONER:
`Paul Berghoff
`berghoff@mbhb.com
`
`Joshua Rich
`rich@mbhb.com
`
`Andrew Williams
`williams@mbhb.com
`
`PATENT OWNER:
`David Berl
`dberl@wc.com
`
`Dov Grossman
`dgrossman@wc.com
`
`
`
`
`7
`
`
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