Trials@uspto.gov Paper 7
`Tel: 571-272-7822 Entered: September 22, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`
`Petitioner,
`
`v.
`
`ALCON RESEARCH, LTD.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-01053
`Patent 8,268,299 B2
`_______________
`
`
`
`Before RICHARD E. SCHAFER, GRACE KARAFFA OBERMANN,
`and SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`
`
`OBERMANN, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`Tel: 571-272-7822 Entered: September 22, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`
`Petitioner,
`
`v.
`
`ALCON RESEARCH, LTD.,
`
`Patent Owner.
`_______________
`
`Case IPR2017-01053
`Patent 8,268,299 B2
`_______________
`
`
`
`Before RICHARD E. SCHAFER, GRACE KARAFFA OBERMANN,
`and SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`
`
`OBERMANN, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`IPR2017-01053
`Patent 8,268,299 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.
`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 via e-mail
`at Trials@uspto.gov within one month of the date of this Scheduling Order
`if there is a need to discuss proposed changes to this Scheduling Order or
`proposed motions with the Board. See Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for
`
`2
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`IPR2017-01053
`Patent 8,268,299 B2
`
`the initial conference call). Specifically, if Lead Counsel for either party
`anticipates that he or she may be unable to attend the final hearing on the
`date set, counsel for that party must notify the Board by requesting a
`conference call within one month of the entry date of this Order.
`
`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.
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`3
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`IPR2017-01053
`Patent 8,268,299 B2
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`E. DUE DATE 4
`1.
`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.
`2.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) and any request for oral argument (id. § 42.70(a)) by DUE
`DATE 4.
`
`F. DUE DATE 5
`1.
`Each party must file any reply to an observation on cross-
`examination testimony by DUE DATE 5.
`2.
`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).
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`4
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`IPR2017-01053
`Patent 8,268,299 B2
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`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. 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. 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. 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
`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.
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`IPR2017-01053
`Patent 8,268,299 B2
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`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .......................................... Upon Request
`
`DUE DATE 1 ................................................................... December 22, 2017
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
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`DUE DATE 2 ......................................................................... March 22, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ........................................................................... April 20, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ............................................................................ May 11, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ............................................................................ May 25, 2018
`Response to observation
`Opposition to motion to exclude
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`DUE DATE 6 .............................................................................. June 1, 2018
`Reply to opposition to motion to exclude
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`DUE DATE 7 ............................................................................ June 14, 2018
`Oral argument (if requested)
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`6
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`IPR2017-01053
`Patent 8,268,299 B2
`
`PETITIONER:
`
`Michael R. Houston, Ph.D.
`Joseph P. Meara, Ph.D.
`James P. McParland, Ph.D.
`FOLEY & LARDNER LLP
`mhouston@foley.com
`jmeara-pgp@foley.com
`jmcparland@foley.com
`
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS LLC
`tliu@agpharm.com
`
`
`
`PATENT OWNER:
`
`David Krinsky
`Christopher Suarez
`WILLIAMS & CONNOLLY LLP
`dkrinsky@wc.com
`csuarez@wc.com
`
`7
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`
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