`571-272-7822
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`Paper 12
`Entered: November 29, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICRO LABS LIMITED and
`MICRO LABS USA INC.,
`Petitioner,
`
`v.
`
`SANTEN PHARMACEUTICAL CO., LTD. and
`ASAHI GLASS CO., LTD.,
`Patent Owner.
`____________
`
`IPR2017-01434
`Patent 5,886,035
`____________
`
`
`
`
`Before LORA M. GREEN, JO-ANNE M. KOKOSKI, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
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`
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`
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`SCHEDULING ORDER
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`IPR2017-01434
`Patent 5,886,035
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`A. GENERAL INSTRUCTIONS
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`1. Initial Conference Call
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`The parties are directed to contact the Board within fifteen (15)
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`business days of the date of this Order is there is a need to discuss:
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`(a) proposed changes to this Scheduling Order (i.e., regarding DUE DATES
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`6 and 7); or (b) any proposed motions, not authorized already by our Rules
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`or by this Scheduling Order, which the parties anticipate filing during the
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`trial. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765–
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`66 (Aug. 14, 2012) (setting forth guidance in preparing for the initial
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`conference call). To request a conference call, the requesting party should
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`submit a list of dates and times when both parties are available for a call.
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`2. Confidential Information
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`The parties must file confidential information using the appropriate
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`availability indicator in PTABE2E (e.g., “Board and Parties Only”),
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`regardless of whose confidential information it is. It is the responsibility of
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`the party whose confidential information is at issue, not necessarily the
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`proffering party, to file the motion to seal, unless the party whose
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`confidential information is at issue is not a party to this proceeding.
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`A protective order does not exist in a case until one is filed in the case
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`and is approved by the Board. If a motion to seal is filed by either party, the
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`proposed protective order should be presented as an exhibit to the motion.
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`The motion to seal must include a certification that the moving party has in
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`good faith conferred or attempted to confer with other affected parties in an
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`effort to resolve any dispute. See 37 C.F.R. 42.54(a).
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`The parties are urged to operate under the Board’s default protective
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`order, should that become necessary. See Default Protective Order, Office
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`IPR2017-01434
`Patent 5,886,035
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`Patent Trial Practice Guide, 77 Fed. Reg. at 48,769–71, App. B. If the
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`parties choose to propose a protective order deviating from the default
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`protective order, they should submit the proposed protective order jointly. A
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`marked-up comparison of the proposed and default protective orders should
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`be presented as an additional exhibit to the motion to seal, so that differences
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`can be understood readily. The parties should contact the Board if they
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`cannot agree on the terms of the proposed protective order.
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`Redactions should be limited strictly to isolated passages consisting
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`entirely of confidential information. The thrust of the underlying argument
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`or evidence must be clearly discernable from the redacted version.
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`Information subject to a protective order will become public if
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`identified in a final written decision in this proceeding. A motion to
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`expunge the information will not necessarily prevail over the public interest
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`in maintaining a complete and understandable file history. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. at 48,761.
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`3. Motion to Amend
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`Although the filing of a Motion to Amend is authorized under our
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`Rules, the patent owner must confer with the Board before filing any Motion
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`to Amend. See 37 C.F.R. § 42.121(a). A conference call to satisfy the
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`requirement of 37 C.F.R. § 42.121(a) must be scheduled no less than ten
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`(10) business days prior to DUE DATE 1.
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`4. Discovery Disputes
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`The panel encourages the parties to resolve disputes relating to
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`discovery on their own and in accordance with the precepts set forth in 37
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`C.F.R. § 42.1(b). To the extent that a dispute arises between the parties
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`relating to discovery, the parties shall meet and confer to resolve such a
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`IPR2017-01434
`Patent 5,886,035
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`dispute before contacting the Board. If attempts to resolve the dispute fail,
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`either party may request a conference call with the Board and the other party
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`in order to seek authorization to move for relief.
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`In any request for a conference call with the Board to resolve a
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`discovery dispute, the requesting party shall: (1) certify that it has conferred
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`with the other party in an effort to resolve the dispute; (2) identify with
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`specificity the issues for which agreement has not been reached; (3) identify
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`the precise relief to be sought; and (d) propose specific dates and times at
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`which both parties are available for the conference call.
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`5. Depositions
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`The parties are advised that the Testimony Guidelines appended to the
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`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772, App. D, apply to
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`this proceeding. The Board may impose an appropriate sanction for failure
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`to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For example,
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`reasonable attorneys’ fees incurred by any party may be levied on a person
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`who impedes, delays, or frustrates the fair examination of a witness.
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`Whenever a party submits a deposition transcript as an exhibit in this
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`proceeding, the submitting party shall file the full transcript of the deposition
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`rather than excerpts of only those portions being cited. After a deposition
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`transcript has been submitted as an exhibit, all parties who subsequently cite
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`to portions of the transcript shall cite to the first-filed exhibit rather than
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`submitting another copy of the same transcript.
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`6. Cross-Examination
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`Except as the parties might otherwise agree, for each due date—
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`1.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`IPR2017-01434
`Patent 5,886,035
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`7. Observations on Cross-Examination
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`Observations on cross-examination provide the parties with a
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`mechanism to draw the Board’s attention to relevant cross-examination
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`testimony of a reply witness because no further substantive paper is
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`permitted after the reply. See Office Patent Trial Practice Guide, 77 Fed.
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`Reg. at 48,768 (Aug. 14, 2012). The observation must be a concise
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`statement of the relevance of precisely identified testimony to a precisely
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`identified argument or portion of an exhibit. Each observation should not
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`exceed a single, short paragraph. The opposing party may respond to the
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`observation. Any response must be equally concise and specific.
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`B. DUE DATES
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`The Appendix to this Order sets due dates for the parties to take action
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`after institution of these proceedings. The parties may stipulate to different
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`dates for DUE DATES 1 through 5 (earlier or later, but no later than DUE
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`DATE 6). A notice of the stipulation, specifically identifying the changed
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`due dates, must be promptly filed. If the parties stipulate to an extension of
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`DUE DATE 4, any request for oral hearing must still be filed on or before
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`the date set forth in this Order, to provide sufficient time for the Board to
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`accommodate the hearing. The parties may not stipulate to an extension of
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`DUE DATES 6 and 7, and, if either party anticipates a need to alter DUE
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`DATE 7, the parties must schedule a conference call with the panel
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`IPR2017-01434
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`immediately upon identifying any conflict or potential conflict with DUE
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`DATE 7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see Section C, below).
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`1. DUE DATE 1
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`The patent owner may file—
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`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by
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`DUE DATE 1. If the patent owner elects not to file anything, the patent
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`owner must arrange a conference call with the parties and the Board. The
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`patent owner is cautioned that any arguments for patentability not raised in
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`the response will be deemed waived.
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`2. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`4. DUE DATE 4
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`a.
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`Each party must file any observations on the cross-examination
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`testimony of a reply witness (see section D, below) by DUE DATE 4.
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`IPR2017-01434
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`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) by DUE DATE 4.
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`c. Each party must file any request for oral argument (37 C.F.R.
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`§ 42.70(a)) by DUE DATE 4. As noted above, DUE DATE 4 is not
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`extendible with respect to any request for oral argument.
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`5. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`6. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`IPR2017-01434
`Patent 5,886,035
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`DUE DATE APPENDIX
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`DUE DATE 1 ............................................................................ March 5, 2018
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 ............................................................................... June 5, 2018
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ................................................................................ July 5, 2018
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 .............................................................................. July 26, 2018
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ............................................................................ August 9, 2018
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ........................................................................ August 16, 2018
`Reply to opposition to motion to exclude
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`DUE DATE 7 .................................................................... September 6, 2018
`Oral argument (if requested).
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`IPR2017-01434
`Patent 5,886,035
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`PETITIONER:
`
`Cedric C.Y. Tan
`Sean M. Weinman
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`cedric.tan@pillsburylaw.com
`sean.weinman@pillsburylaw.com
`
`
`PATENT OWNER:
`
`Arlene L. Chow
`Ernest Yakob, Ph.D.
`HOGAN LOVELLS US LLP
`arlene.chow@hoganlovells.com
`ernest.yakob@hoganlovells.com
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