Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
` Entered: July 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00544
`Patent 7,534,263 B2
`____________
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`571-272-7822
`
`
`
` Paper 9
` Entered: July 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00544
`Patent 7,534,263 B2
`____________
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2017-00544
`Patent 7,534,263 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 a 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 one month of this
`Order 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) (discussing guidance for initial
`conference calls).
`
`2
`
`
`
`IPR2017-00544
`Patent 7,534,263 B2
`
`
`2. DUE DATE 1
`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).
`Patent Owner must file any such response and/or motion to amend by DUE
`DATE 1. If Patent Owner elects not to file anything, Patent Owner must
`arrange a conference call with the parties and the Board. Patent Owner is
`cautioned that any arguments for patentability not raised in the response will
`be deemed waived.
`
`3. DUE DATE 2
`Petitioners must file any reply to Patent Owner’s response and any
`opposition to the motion to amend by DUE DATE 2.
`
`4. DUE DATE 3
`Patent Owner must file any reply to Petitioners’ 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
`
`
`
`IPR2017-00544
`Patent 7,534,263 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 Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The observation must be a
`concise statement of the relevance of precisely identified testimony to a
`
`4
`
`
`
`IPR2017-00544
`Patent 7,534,263 B2
`
`
`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. MOTION TO AMEND
`Under 37 C.F.R. §§ 42.24 and 42.121, a motion to amend, if filed in
`this proceeding, and a petitioner’s opposition to a motion to amend, are
`limited to twenty-five (25) pages; a patent owner’s reply to an opposition to
`a motion to amend is limited to twelve (12) pages; and a claim listing may
`be contained in an appendix to a motion to amend, which does not count
`toward the page limit of the motion. See 37 C.F.R. §§ 42.24, 42.121(b);
`Amendments to the Rules of Practice for Trials Before the Patent Trial and
`Appeal Board, 80 Fed. Reg. 28,561, 28,565–66 (Final Rule) (May 19, 2015).
`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 Board to request the conference in sufficient time to ensure that
`the conference is conducted at least one week before DUE DATE 1.
`
`E. PETITIONERS’ REPLY
`Under 37 C.F.R. § 42.24(c), a petitioner’s reply brief to a patent
`owner’s response is limited to 5,600 words. See 37 C.F.R. § 42.24(c);
`Amendments to the Rules of Practice for Trials Before the Patent Trial and
`Appeal Board, 80 Fed. Reg. at 28,565.
`
`
`5
`
`
`
`IPR2017-00544
`Patent 7,534,263 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ...................................................................... October 12, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... January 12, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... February 12, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................... March 5, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ......................................................................... March 19, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ......................................................................... March 26, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................. April 5, 2018
`Oral argument (if requested)
`
`6
`
`
`
`IPR2017-00544
`Patent 7,534,263 B2
`
`
`PETITIONER:
`
`Christy G. Lea
`Joseph R. Re
`Colin B. Heideman
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2CGL@knobbe.com
`2JRR@knobbe.com
`2CBH@knobbe.com
`
`
`PATENT OWNER:
`
`Sanya Sukduang
`Timothy P. McAnulty
`Daniel F. Klodowski
`Kassandra M. Officer
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`sanya.sukduang@finnegan.com
`timothy.mcanulty@finnegan.com
`daniel.klodowski@finnegan.com
`kassandra.officer@finnegan.com
`
`
`
`
`
`
`
`
`7
`
`
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