`571.272.7822
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` Paper No. 14
` Entered: February 8, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KOIOS PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`MEDAC GESELLSCHAFT FÜR KLINISCHE SPEZIALPRÄPARATE
`MBH,
` Patent Owner.
`____________
`
`Case IPR2016-01370
`Patent 8,644,231 B2
`____________
`
`Before JACQUELINE WRIGHT BONILLA, TONI R. SCHEINER, and
`ERICA A. FRANKLIN, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`SCHEDULING ORDER
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`
`
`
`
`
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`IPR2016-01370
`Patent 8,664,231 B2
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`A.
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`INITIAL CONFERENCE CALL
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`The parties are directed to contact the Board within a month of this
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`decision if there is a need to discuss proposed changes to this Scheduling
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`Order or proposed motions. To request a conference call, the parties should
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`submit a list of dates and times when they are available for a call. If an
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`initial conference call is requested, the parties should be prepared to discuss
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`any proposed changes to this Scheduling Order and any motions the parties
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`anticipate filing during the trial. The parties are directed to the Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012), for
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`guidance in preparing for the initial conference call.
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`B. DUE DATES
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`This order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate to different dates for DUE
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`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
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`be promptly filed. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (id. § 42.64(b)(2)), to conduct cross-examination (id.
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`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
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`examination testimony (see section C, below). In addition, any request for
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`oral argument should be filed by original DUE DATE 4 as set forth in the
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`DUE DATE APPENDIX.
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 App. D, at
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`
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`2
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`
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`IPR2016-01370
`Patent 8,664,231 B2
`
`48,772–73 (Aug. 14, 2012), apply to this proceeding. The Board may
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`impose an appropriate sanction for failure to adhere to the Testimony
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`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`1.
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`DUE DATE 1
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`Patent Owner may file—
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`a. A response to the petition (37 C.F.R. § 42.120), and
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`b. A motion to amend the patent (id. § 42.121).
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`Patent Owner must file any such response or motion to amend by
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`DUE DATE 1. Patent Owner is reminded that it must confer with the Board
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`before filing a motion to amend. Id. § 42.121(a). Patent Owner should
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`contact the Board to request the conference in sufficient time to ensure that
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`the conference is conducted at least one week before DUE DATE 1. If
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`Patent Owner elects not to file either a response to the petition or a motion to
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`amend, Patent Owner must arrange a conference call with the parties and the
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`Board. 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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`2.
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`DUE DATE 2
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`Petitioner must file any reply to Patent Owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3.
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`DUE DATE 3
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`Patent Owner must file any reply to Petitioner’s opposition to Patent
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`Owner’s motion to amend by DUE DATE 3.
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`3
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`
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`IPR2016-01370
`Patent 8,664,231 B2
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`4.
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`DUE DATE 4
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`a. Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below)
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`by DUE DATE 4.
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`b. Each party must file any motion to exclude evidence
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`(37 C.F.R § 42.64(c)) and any request for oral argument (id.
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`§ 42.70(a)) by DUE DATE 4.
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`5.
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`DUE DATE 5
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`a. Each party must file any response to an observation on
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`cross-examination testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`6.
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`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.
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`DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE DATE
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`7.
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`C.
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`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
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`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
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`filing date for any paper in which the cross-examination testimony is
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`expected to be used. Id.
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`4
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`IPR2016-01370
`Patent 8,664,231 B2
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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
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
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`concise statement of the relevance of precisely identified testimony to a
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`precisely identified argument or portion of an exhibit. Each observation
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`should not exceed a single, short paragraph. The opposing party may
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`respond to the observation. Any response must be equally concise and
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`specific.
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`E.
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`PROTECTIVE ORDER
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`No protective order has been entered in this proceeding. The parties
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`are reminded of the requirement for a protective order when filing a motion
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`to seal. 37 C.F.R. § 42.54. If the parties have agreed to a proposed
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`protective order, including the Standing Default Protective Order, Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756 App. B (Aug. 14, 2012),
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`they should file a signed copy of the proposed protective order with the
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`motion to seal. If the parties choose to propose a protective order other than,
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`or departing from, the default Standing Protective Order, they must submit a
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`joint, proposed protective order, accompanied by a red-lined version based
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`on the default protective order in Appendix B to the Board’s Office Patent
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`Trial Practice Guide.
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`5
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`IPR2016-01370
`Patent 8,664,231 B2
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL ..............................................Upon Request
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`DUE DATE 1 .............................................................................. May 9, 2017
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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 ...................................,,.................................... August 9, 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 .................................................................. September 11, 2017
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`Patent Owner’s reply to Petitioner’s opposition to motion to amend
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`DUE DATE 4 ........................................................................ October 2, 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 ...................................................................... October 16, 2017
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ...................................................................... October 23, 2017
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`Reply to opposition to motion to exclude
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`DUE DATE 7 .................................................................... November 7, 2017
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`Oral argument (if requested)
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`
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`6
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`7
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`IPR2016-01370
`Patent 8,664,231 B2
`
`
`
`For PETITIONER:
`
`Scott E. Kamholz
`DeAnn F. Smith
`FOLEY HOAG LLP
`skamholz@foleyhoag.com
`dsmith@foleyhoag.com
`
`
`
`For PATENT OWNER:
`
`James F. Haley, Jr.
`J. Steven Baughman
`Megan F. Raymond
`Brian Gummow
`ROPES & GRAY LLP
`james.haley@ropesgray.com
`steven.baughman@ropesgray.com
`megan.raymond@ropesgray.com
`brian.gummow@ropesgray.com
`
`
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