`571.272.7822
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`Paper 15
`Entered: January 2, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUROBINDO PHARMA USA, INC.
`Petitioner,
`
`v.
`
`ANDRX CORPORATION,
`ANDRX LABORATORIES, INC.
`ANDRX LABORATORIES (NJ), INC.
`ANDRX EU LTD.
`ANDRX PHARMACEUTICALS, LLC,
`TEVA PHARMACEUTICAL INDUSTRIES LTD.
`Patent Owner(s).
`____________
`
`
`
`
`
`
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`
`
`
`
`Before SUSAN L.C. MITCHELL, TINA E. HULSE, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`NEWMAN, Administrative Patent Judge.
`
`
`
`Case IPR2017-01648
`Patent 6,866,866 B1
`____________
`
`SCHEDULING ORDER
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`IPR2017-01648
`Patent 6,866,866 B1
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`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) (“Trial Practice Guide”) (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
`An initial conference call is scheduled for January 29, 2018, at 1
`p.m. EDST. The parties should be prepared to discuss proposed changes to
`this Scheduling Order or proposed motions, as well as any other procedural
`issues of concern. See Trial Practice Guide, 77 Fed. Reg. at 48,765–66
`(providing guidance in preparing for the initial conference call).
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`IPR2017-01648
`Patent 6,866,866 B1
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`2. DUE DATE 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.
`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
`the 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.
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`Patent 6,866,866 B1
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`6. DUE DATE 5
`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 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 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.
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`The opposing party may respond to the observation. Any response must be
`equally concise and specific.
`D. 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.
`Finally, we refer the parties to the instructions on the Board’s website
`at http://www.uspto.gov/ip/boards/bpai/prps.jsp regarding the proper use of
`email communication to the Board. Specifically, an email requesting a
`conference call should copy the other party, indicate generally the relief
`being requested or the subject matter of the conference call, state whether
`the opposing party opposes the request, and include multiple times when all
`parties are available. The email may not contain substantive argument. The
`parties also are reminded that they should discuss and attempt to resolve
`issues with each other first before requesting conference calls with the
`Board.
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`DUE DATE APPENDIX
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`Initial Conference Call………………………January 29, 2018, 1 pm EDST
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`DUE DATE 1 ......................................................................... March 23, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
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`DUE DATE 2 ............................................................................ June 15, 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 ............................................................................. July 13, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 .......................................................................... August 3, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
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`DUE DATE 5 ........................................................................ August 17, 2018
`Response to observation
`Opposition to motion to exclude
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`DUE DATE 6 ........................................................................ August 24, 2018
`Reply to opposition to motion to exclude
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`DUE DATE 7 .................................................................. September 24, 2018
`Oral argument (if requested)
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`IPR2017-01648
`Patent 6,866,866 B1
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`PETITIONER:
`
`Steven Moore
`John Winterle
`Hans Peter Hoffmann
`Alan Gardner
`WITHERS BERGMAN LLP
`steven.moore@withersworldwide.com
`alan.gardner@withersworldwide.com
`
`
`PATENT OWNER:
`
`David L. Cavanaugh
`Jonathan Ben-Ur Roses
`WILMER HALE
`david.cavanaugh@wilmerhale.com
`jonathan.roses@wilmerhale.com
`
`David A. Chavous
`Chavous Intellectual Property Law LLC
`dchavous@chavousiplaw.com
`
`David A. Giordano
`Wilmer Cutler Pickering Hale and Dorr LLP
`davidg@giordanolawllc.com
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