throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper 9
`
`
` Entered: May 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00200
`Patent 8,603,514 B2
`____________
`
`
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`

`

`IPR2017-00200
`Patent 8,603,514 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) (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, proposed motions, or other relevant issues. 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
`
`

`

`IPR2017-00200
`Patent 8,603,514 B2
`
`2. 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 a response, 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. A motion to amend may be filed only
`
`after conferring with the Board.
`
`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
`
`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
`
`

`

`IPR2017-00200
`Patent 8,603,514 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. OBSERVATIONS ON CROSS-EXAMINATION
`
`Observations on cross-examination provide 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 observations must be a concise
`
`
`
`
`4
`
`

`

`IPR2017-00200
`Patent 8,603,514 B2
`
`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.
`
`D.
`
`PROTECTIVE ORDER
`
`
`
`A protective order does not exist in a proceeding until one is approved
`
`and entered by the Board. The parties are reminded of the requirement for a
`
`protective order when filing a motion to seal. 37 C.F.R. §42.54. If the
`
`parties have agreed to a proposed protective order, including the Standing
`
`Default Protective Order, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012), they
`
`should file a signed copy of the proposed protective order with the motion to
`
`seal. If the parties choose to propose a protective order other than, or
`
`deviating from, the default Standing Protective Order, they must submit a
`
`joint, proposed protective order. A marked-up comparison or red-lined
`
`version of the default protective order in Appendix B to the Board’s Office
`
`Patent Trial Practice Guide should be presented with the motion to seal so
`
`that differences can be understood readily.
`
`E. 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.
`
`
`
`
`5
`
`

`

`IPR2017-00200
`Patent 8,603,514 B2
`
`
`Regarding discovery disputes, the parties are encouraged to resolve
`
`such issues on their own and in accordance with the precepts 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 should 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 to
`
`discuss the issue and, if necessary, seek authorization to file a motion in that
`
`regard. An email requesting a conference call shall: (a) copy the other party,
`
`(b) indicate generally the subject matter of the conference call and relief
`
`requested, (c) state whether the opposing party opposes the request, and (d)
`
`include multiple times when all parties are available for a conference. The
`
`email shall not contain substantive argument.
`
`
`
`
`6
`
`

`

`IPR2017-00200
`Patent 8,603,514 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. July 24, 2017
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................... Oct. 2, 2017
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. Oct. 30, 2017
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................... Nov. 20, 2017
`
`Motion for observation regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 .............................................................................. Dec. 4, 2017
`
`Response to observation
`
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................ Dec. 11, 2017
`
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................. Jan. 10, 2018
`
`Oral argument (if requested)
`
`
`
`
`
`
`
`
`7
`
`

`

`IPR2017-00200
`Patent 8,603,514 B2
`
`PETITIONER:
`
`Steven Parmelee
`sparmelee@wsgr.com
`
`Michael Rosato
`mrosato@wsgr.com
`
`Jad Mills
`jmills@wsgr.com
`
`
`PATENT OWNER:
`
`Harold Fox
`hfox@steptoe.com
`
`John Abramic
`jabramic@steptoe.com
`
`
`
`
`
`8
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket