Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 9
`
`
` Entered: August 16, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RIMFROST AS,
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`____________
`
`Case IPR2017-00745 (Patent 9,078,905 B2)
`Case IPR2017-00746 (Patent 9,028,877 B2)
`Case IPR2017-00747 (Patent 9,078,905 B2)
`Case IPR2017-00748 (Patent 9,028,877 B2)
`____________
`
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER1
`
`
`1 This Order addresses a schedule that applies to each of the captioned cases.
`Thus, we exercise our discretion to issue a single order, to be entered in each
`case. The parties are not authorized to use this case caption, or to file
`consolidated papers, without prior authorization.
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 9
`
`
` Entered: August 16, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RIMFROST AS,
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`____________
`
`Case IPR2017-00745 (Patent 9,078,905 B2)
`Case IPR2017-00746 (Patent 9,028,877 B2)
`Case IPR2017-00747 (Patent 9,078,905 B2)
`Case IPR2017-00748 (Patent 9,028,877 B2)
`____________
`
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER1
`
`
`1 This Order addresses a schedule that applies to each of the captioned cases.
`Thus, we exercise our discretion to issue a single order, to be entered in each
`case. The parties are not authorized to use this case caption, or to file
`consolidated papers, without prior authorization.
`
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`
`INITIAL CONFERENCE CALL
`A.
`No initial conference call is scheduled for this case. The parties are
`encouraged to contact the Board to request a call if any issues arise during
`trial. The parties are directed to the following matters:
`1. Motion to Amend
`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 a conference in sufficient time to ensure that the
`conference is conducted at least two weeks before DUE DATE 1. Patent
`Owner and Petitioner are directed to the rules governing Motions to Amend,
`with particular regard to applicable page limits. 37 C.F.R. §§ 42.24(a)(1),
`42.24(b)(3), 42.24(c)(3), 42.121(b). We direct the parties to the Board’s
`website for representative decisions relating to Motions to Amend among
`other topics. The parties may access these representative decisions at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and
`_opinions.jsp.
`Confidential Information
`2.
`The parties must file confidential information using the appropriate
`availability indicator in PTAB E2E (e.g., “Board and Parties Only”),
`regardless of whose confidential information it is. It is the responsibility of
`the party whose confidential information is at issue, not necessarily the
`proffering party, to file the motion to seal.
`
`2
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`
`No protective order has been entered in this proceeding. The parties
`are reminded of the requirement for a protective order when filing a motion
`to seal. 37 C.F.R. § 42.54. A protective order does not take effect until a
`protective order is filed in the case and approved by the Board. If a motion
`to seal is filed by either party, the proposed protective order should be
`presented as an exhibit to the motion. The parties are urged to operate under
`the Board’s default protective order. See Default Protective Order, Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012).
`If the parties propose a protective order deviating from the default protective
`order, they should submit the proposed order jointly. A marked-up
`comparison of the proposed and default protective orders should be
`presented as an additional exhibit to the motion to seal, so that differences
`are highlighted. The parties should contact the Board if they cannot agree
`on the terms of the proposed protective order.
`a.
`Redactions
`Redactions should be limited strictly to isolated passages consisting of
`confidential information. The thrust of the underlying argument or evidence
`must be discernable from the redacted version.
`b.
`Confidential Information in Final Written Decision
`Information subject to a protective order will become public if
`identified in a final written decision in this proceeding. A motion to
`expunge the information will not necessarily prevail over the public interest
`
`3
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`in maintaining a complete and understandable file history. See Office Patent
`Trial Practices Guide, 77 Fed. Reg. at 48, 761.
`
`B. 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 addition, even if the parties stipulate to an extension of
`DUE DATE 4, any request for oral hearing must still be filed on or before
`the date set forth in this Order, to provide sufficient time for the Board to
`accommodate the hearing.
`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 Trial Practice Guide, 77 Fed. Reg. at 48,772 (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
`
`4
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`be levied on a person who impedes, delays, or frustrates the fair examination
`of a witness.
`DUE DATE 1
`1.
`The 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).
`The patent owner must file any such response or motion to amend by
`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 raised in
`the response will be deemed waived.
`2.
`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.
`3.
`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.
`4.
`DUE DATE 4
`a. Each party must file any motion for an observation on the cross-
`examination testimony of a 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
`
`5
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`DUE DATE 4. As noted above, DUE DATE 4 is not extendible with
`respect to any request for oral argument.
`5.
`DUE DATE 5
`a. Each party must file any reply 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.
`DUE DATE 6
`6.
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`DUE DATE 7
`7.
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`CROSS-EXAMINATION
`C.
`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.
`D. 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-
`
`6
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`examination testimony of a witness, since no further substantive paper is
`permitted after the reply. See Office Trial Practice Guide, 77 Fed. Reg. at
`48,768. The observation must be a concise 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 parties may respond to the observation. Any response must be equally
`concise and specific.
`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.
`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
`
`7
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`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.
`
`
`
`8
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 .................................................................... November 1, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ....................................................................... January 17, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... February 15, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................... March 8, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ......................................................................... March 22, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ......................................................................... March 29, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................... April 24, 2018
`Oral argument (if requested)
`
`
`
`9
`
`
`
`IPR2017-00745 (Patent 9,078,905 B2)
`IPR2017-00746 (Patent 9,028,877 B2)
`IPR2017-00747 (Patent 9,078,905 B2)
`IPR2017-00748 (Patent 9,028,877 B2)
`
`PETITIONERS:
`James Harrington
`Michael Chakansky
`Ronald Baron
`John Gallagher
`HOFFMANN & BARON, LLP
`jfhdocket@hbiplaw.com
`mchakansky@hbiplaw.com
`rbaron@hbiplaw.com
`jgallagher@hbiplaw.com
`
`PATENT OWNER:
`David Casimir
`John Jones
`CASIMIR JONES S.C.
`dacasimir@casimirjones.com
`jmjones@casimirjones.com
`docketing@casimirjones.com
`
`10
`
`
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