`571-272-7822
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` Paper No. 11
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`Entered: September 28, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS, INC.,
`Petitioners,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)1
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, DEBORAH KATZ, and RAMA
`G. ELLURU, Administrative Patent Judges.
`
`KATZ, Administrative Patent Judge.
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`
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`SCHEDULING ORDER
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`
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`1 We exercise our discretion to issue one Order to be filed in both cases. The
`parties are not authorized to use this style heading for any subsequent
`papers.
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`
`
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 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 or proposed motions. 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. DUE DATE 1
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`2
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
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`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. 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. 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.
`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.
`6. DUE DATE 5
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`3
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
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`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
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`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
`precisely identified argument or portion of an exhibit. Each observation
`should not exceed a single, short paragraph. The opposing party may
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`4
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
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`respond to the observation. Any response must be equally concise and
`specific.
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`5
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
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`DUE DATE APPENDIX
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`INITIAL CONFERENCE CALL........................................UPON REQUEST
`DUE DATE 1 ..........................................................................January 5, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2 ..............................................................................April 6, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 .............................................................................. May 4, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`DUE DATE 4 ............................................................................ May 25, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 ...............................................................................June 8, 2018
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 .............................................................................June 15 2018
`Reply to opposition to motion to exclude
`DUE DATE 7 .............................................................................July 9, 2018
`Oral argument (if requested)
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`6
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`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
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`For PETITIONER:
`Elizabeth Holland
`Cynthia Hardman
`Goodwin Procter LLP
`eholland@goodwinprocter.com
`chardman@goodwinprocter.com
`
`For PATENT OWNER:
`Robert Green
`Emer Simic
`Green, Griffith & Borg-Breen, LLP
`rgreen@greengriffith.com
`esimic@greengriffith.com
`
`Dennis Bennett
`Global Patent Group, LLC
`admin@globalpatentgroup.com
`
`Matthew Phillips
`Laurence & Phillips IP Law LLP
`mphillips@lpiplaw.com
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`7
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