`Trials@uspto.gov
`571-272-7822
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` Paper No. 9
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`Entered: November 17, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC,
`Petitioner,
`
`v.
`
`SHIRE LABORATORIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01033
`PATENT RE42,096 E
`____________
`
`
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`SCHEINER, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
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`
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`
`
`
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`
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`IPR2016-01033
`Patent RE42,096 E
`
`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
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`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)
`
`(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 decision
`
`if there is a need to discuss proposed changes to this Scheduling Order or proposed
`
`motions. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66
`
`(Aug. 14, 2012) (guidance in preparing for the initial conference call).
`
`2. DUE DATE 1
`
`The patent owner may file—
`
`a. A response to the petition (37 C.F.R. § 42.120), and
`
`
`
`2
`
`
`
`IPR2016-01033
`Patent RE42,096 E
`
`
`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. 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
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`Board to request the conference in sufficient time to ensure that the conference is
`
`conducted at least one week before 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
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`raised in the response will be deemed waived.
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`3. 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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`4. 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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`5. 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 C, below) by DUE DATE 4.
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`b. 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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`6. DUE DATE 5
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`a. Each party must file any response to an observation on cross-examination
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`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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`
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`3
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`
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`IPR2016-01033
`Patent RE42,096 E
`
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`7. 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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`8. 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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`B. 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 is due.
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`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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`C. 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
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`(Aug. 14, 2012). The observation must be a concise statement of the relevance of
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`precisely identified testimony to a precisely identified argument or portion of an
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`exhibit. Each observation should not exceed a single, short paragraph. The
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`opposing party may respond to the observation. Any response must be equally
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`concise and specific.
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`
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`4
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`
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`IPR2016-01033
`Patent RE42,096 E
`
`DUE DATE APPENDIX
`
`
`
`INITIAL CONFERENCE CALL..................................................UPON REQUEST
`
`DUE DATE 1 ..............................................................................February 17, 2017
`
`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 ......................................................................................May 17, 2017
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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 .....................................................................................June 19, 2017
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ......................................................................................July 10, 2017
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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 .....................................................................................July 24, 2017
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 .....................................................................................July 31, 2017
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ..................................................................................August 7, 2017
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`Oral argument (if requested)
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`
`
`5
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`
`
`IPR2016-01033
`Patent RE42,096 E
`
`PETITIONER:
`
`Jitendra Malik
`jitty.malik@alston.com
`
`Bryan Skelton
`bryan.skelton@alston.com
`
`James Abe
`James.abe@alston.com
`
`Brianna Kadjo
`brianna.kadjo@alston.com
`
`PATENT OWNER:
`
`Joseph Robinson
`joseph.robinson@troutmansanders.com
`
`Dustin Weeks
`dustin.weeks@troutmansanders.com
`
`Robert Schaffer
`robert.schaffer@troutmansanders.com
`
`
`
`
`
`
`6
`
`
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