`Tel: 571-272-7822
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`Paper 17
`Entered: February 7, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN LABORATORIES LIMITED,
`Petitioner,
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`v.
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`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`Patent Owner.
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`Case IPR2016-01563
`Patent 8,673,927 B2
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`
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`Before TONI R. SCHEINER, BRIAN P. MURPHY, and
`ZHENYU YANG, Administrative Patent Judges.
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`MURPHY, Administrative Patent Judge.
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`SCHEDULING ORDER
`37 C.F.R. § 42.5
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`IPR2016-01563
`Patent 8,673,927 B2
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`A. GENERAL INSTRUCTIONS
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`1.
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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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`Order if there is a need to discuss proposed changes to this Scheduling Order
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`or proposed motions that have not been authorized in this Order or other
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`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
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`preparing for the initial conference call). A request for an initial conference
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`call shall include a list of proposed motions, if any, to be discussed during
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`the call.
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`2.
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`Protective Order
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`No protective order shall apply to this proceeding until the Board
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`enters one. If either party files a motion to seal before entry of a protective
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`order, a jointly proposed protective order shall be filed as an exhibit with the
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`motion. The Board encourages the parties to adopt the Board’s default
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`protective order if they conclude that a protective order is necessary. See
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`Default Protective Order, Practice Guide, App. B. If the parties choose to
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`propose a protective order deviating from the default protective order, they
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`must submit the proposed protective order jointly along with a marked-up
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`comparison of the proposed and default protective orders showing the
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`differences.
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`The Board has a strong interest in the public availability of trial
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`proceedings. Redactions to documents filed in this proceeding should be
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`limited to the minimum amount necessary to protect confidential
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`information, and the thrust of the underlying argument or evidence must be
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`clearly discernible from the redacted versions. We also advise the parties
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`2
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`IPR2016-01563
`Patent 8,673,927 B2
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`that information subject to a protective order may become public if
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`identified in a final written decision in this proceeding, and that a motion to
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`expunge the information will not necessarily prevail over the public interest
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`in maintaining a complete and understandable file history. See Practice
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`Guide, at 48,761.
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`3.
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`Discovery Disputes
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`The Board encourages parties to resolve disputes relating to discovery
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`on their own. To the extent that a dispute arises between the parties relating
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`to discovery, the parties must meet and confer to resolve such a dispute
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`before contacting the Board. If attempts to resolve the dispute fail, a party
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`may request a conference call with the Board.
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`4.
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`Testimony
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`The parties are reminded that the Testimony Guidelines appended to
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`the Trial Practice Guide, Appendix D, apply to this proceeding. The Board
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`may 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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`5.
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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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`Cross-examination ordinarily takes place after any supplemental
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`evidence is due. 37 C.F.R. § 42.53(d)(2).
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`Cross-examination ordinarily 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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`IPR2016-01563
`Patent 8,673,927 B2
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`6.
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`Observations on Cross-Examination
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`Observations on cross-examination provide the parties with a
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`mechanism to draw the Board’s attention to relevant cross-examination
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`testimony of a reply witness because no further substantive paper is
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`permitted after the reply. See Trial Practice Guide, at 48,768. The
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`observation must be a concise statement of the relevance of precisely
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`identified testimony to a precisely identified argument or portion of an
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`exhibit. Each observation must not exceed a single, short paragraph. The
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`opposing party may respond to the observation. Any response must be
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`equally concise and specific. Observations and responses are each limited to
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`10 pages or less.
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`7.
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`Oral Argument
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`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
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`To permit the Board sufficient time to schedule the oral argument, the
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`parties may not stipulate to an extension of the request for oral argument
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`beyond the date set forth in the Due Date Appendix.
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`Oral argument, if requested, will be held at the USPTO headquarters
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`in Alexandria, Virginia.
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`Seating in the Board’s hearing rooms may be limited and will be
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`available on a first-come, first-served basis. If either party anticipates that
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`more than five (5) individuals, including counsel, will attend the argument
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`on its behalf, the party should notify the Board as soon as possible and no
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`later than the request for oral argument. Parties should note that the earlier a
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`request for accommodation is made, the more likely the Board will be able
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`to accommodate additional individuals.
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`IPR2016-01563
`Patent 8,673,927 B2
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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 filed promptly. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7, or to the date for requesting oral argument.
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`When stipulating to different times, the parties should consider the
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`effect of the stipulation on times to object to evidence (37 C.F.R.
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`§ 42.64(b)(1)), to supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct
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`cross-examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending
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`on the evidence and cross-examination testimony.
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`1. DUE DATE 1
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`Patent Owner may file—
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`a.
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`A response to the petition (37 C.F.R. § 42.120). If Patent
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`Owner elects not to file a response, Patent Owner must arrange a conference
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`call with the parties and the Board. Patent Owner is cautioned that any
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`arguments for patentability not raised in the response may be deemed
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`waived.
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`b.
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`A motion to amend the patent (37 C.F.R. § 42.121). Patent
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`Owner may file a motion to amend without prior authorization from the
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`Board. Nevertheless, Patent Owner must confer with the Board before filing
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`such a motion. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent
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`Owner should request a conference call with the Board no later than two
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`weeks prior to DUE DATE 1. The parties are directed to the Board’s Web
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`site for precedential, informative, and representative decisions relating to
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`IPR2016-01563
`Patent 8,673,927 B2
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`motions to amend among other topics. The parties may access these
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`decisions at: http://www.uspto.gov/patents-application-process/patent-trial-
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`and-appeal-board/decisions.
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`2. DUE DATE 2
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`Petitioner may file a reply to the Patent Owner’s response and an
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`opposition to the motion to amend.
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`3. DUE DATE 3
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`Patent Owner may file a reply to Petitioner’s opposition to Patent
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`Owner’s motion to amend.
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`4. DUE DATE 4
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`Either party may file—
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`a.
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`Observations on the cross-examination testimony of the
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`opposing party’s reply witnesses.
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`b.
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`A motion to exclude evidence (37 C.F.R § 42.64(c)).
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`5. DUE DATE 5
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`Either party may file—
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`a.
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`A response to the opposing party’s observations on cross-
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`examination testimony.
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`b.
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`An opposition to a motion to exclude evidence.
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`6. DUE DATE 6
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`Either party may file a reply to an opposition to a motion to exclude
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`evidence.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) shall be held on this
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`date. Approximately one month prior to the argument, the Board will issue
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`6
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`IPR2016-01563
`Patent 8,673,927 B2
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`an order setting the start time of the hearing and the procedures that will
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`govern the parties’ arguments.
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`IPR2016-01563
`Patent 8,673,927 B2
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`DUE DATE APPENDIX
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`DUE DATE 1 ........................................................................... April 14, 2017
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`Patent Owner’s response to the petition
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`Patent Owner’s motion to amend claims
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`DUE DATE 2 ............................................................................ June 28, 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 ............................................................................. July 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 .......................................................................... August 9, 2017
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`Observations regarding cross-examination of reply witnesses
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`Motion to exclude evidence
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`REQUEST FOR ORAL ARGUMENT ................................... August 9, 2017
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`DUE DATE 5 ........................................................................ August 23, 2017
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`Response to observations
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`Opposition to motion to exclude
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`DUE DATE 6 ........................................................................ August 30, 2017
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`Reply to opposition to motion to exclude
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`DUE DATE 7 .................................................................. September 22, 2017
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`Oral argument (if requested)
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`IPR2016-01563
`Patent 8,673,927 B2
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`FOR PETITIONER:
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`Thomas Parker
`Thomas.parker@alston.com
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`Chris McArdle
`Chris.mcardle@alston.com
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`Ellen Cheong
`Ellen.cheong@alston.com
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`Charles Naggar
`Charles.naggar@alston.com
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`FOR PATENT OWNER:
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`Leora Ben-Ami
`Leora.benami@kirkland.com
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`Eugene Goryunov
`egoryunov@kirkland.com
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`Mira Mulvaney
`Mira.mulvaney@kirkland.com
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