Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 18
`Entered: September 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`_______________
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`________________
`
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`571-272-7822
`
`
`
` Paper 18
`Entered: September 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`_______________
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`________________
`
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`I. 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, or to an extension of the Request for Oral Argument date.
`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 (id. § 42.64(b)(2)), to conduct cross-examination (id.
`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony (see section II, 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. See 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.
`
`A. INITIAL CONFERENCE CALL
`The parties are directed to contact the Board within a month of this Order
`if there is a need to discuss proposed changes to this Order or proposed
`motions. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`
`
`2
`
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`48,765–66 (Aug. 14, 2012) (guidance in preparing for the initial conference
`call).
`
`B. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`A motion to amend the patent (id. § 42.121).
`b.
`The patent owner must file any such response or motion to amend by
`DUE DATE 1. The patent owner is reminded that it must confer with the
`Board before filing a motion to amend. Id. § 42.121(a). The patent owner
`should contact the Board to request any such conference in sufficient time to
`ensure that the conference is conducted at least one week before DUE
`DATE 1. If the patent owner elects not to file either a response to the
`petition or a motion to amend, 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, or any evidence not
`referred to, are deemed waived.
`
`C. 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.
`
`D. 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.
`
`
`
`3
`
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`
`E. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section III, below) by
`DUE DATE 4.
`b.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) by DUE DATE 4. Any request for oral argument (id. § 42.70(a))
`must also be filed by this date.
`
`F. 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.
`
`G. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`H. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`II. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. See 37 C.F.R. § 42.53(d)(2).
`
`
`
`4
`
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`
`Cross-examination ends no later than a week before the filing
`2.
`date for any paper in which the cross-examination testimony is expected to
`be used. See id.
`
`III. OBSERVATIONS ON CROSS-EXAMINATION
`Observations 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. 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 opposing party may respond to the observation. Any
`response must be equally concise and specific.
`
`IV. MOTION TO AMEND
`Although the filing of a Motion to Amend is authorized under our
`Rules, the patent owner must confer with the Board before filing any Motion
`to Amend. See 37 C.F.R. § 42.121(a). A conference call to satisfy the
`requirement of 37 C.F.R. § 42.121(a) must be scheduled no less than ten
`(10) business days prior to DUE DATE 1.
`
`
`IV. INTERLOCUTORY DISPUTES
`To the extent that a dispute arises between the parties during the trial,
`the parties shall meet and confer to resolve such dispute before contacting
`the Board. If attempts to resolve the dispute fail, a party may request a
`
`
`
`5
`
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`conference call with the Board and the other party in order to seek
`authorization to move for relief. In any request for a conference call with
`the Board, the requesting party shall: (a) certify that it has conferred with
`the other party in an effort to resolve the dispute; (b) identify with specificity
`the issues for which agreement has not been reached; (c) identify the precise
`relief to be sought; and (d) propose specific dates and times at which both
`parties are available for the conference call.
`
`
`
`
`6
`
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`
`DUE DATE APPENDIX
`
`
`DUE DATE 1 .................................................................... December 20, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... March 20, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................ April 20, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................. May 11, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`
`
`REQUEST FOR ORAL ARGUMENT......................................May 11, 2018
`
`DUE DATE 5 ............................................................................ May 25, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ............................................................................... June 1, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................. June 15, 2018
`Oral argument (if requested)
`
`
`
`
`
`
`7
`
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`For PETITIONER:
`
`Jitendra Malik
`H. James Abe
`Lance Soderstrom
`Joseph Janusz
`ALSTON & BIRD LLP
`jitty.malik@alston.com
`james.abe@alston.com
`lance.soderstrom@alston.com
`joe.janusz@alston.com
`
`
`For PATENT OWNER:
`
`Gary Frischling
`Yite Lu
`IRELL & MANELLA LLP
`gfrischling@irell.com
`yjlu@irell.com
`
`
`
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
