Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 17
`
` Entered: March 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02019 (Patent 6,339,142 B1)
`Case IPR2017-02020 (Patent 9,249,218 B2)
`____________
`
`Before ERICA A. FRANKLIN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 17
`
` Entered: March 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02019 (Patent 6,339,142 B1)
`Case IPR2017-02020 (Patent 9,249,218 B2)
`____________
`
`Before ERICA A. FRANKLIN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`SCHEDULING ORDER
`
`
`
`IPR2017-02019 (Patent 6,339,142 B1)
`IPR2017-02020 (Patent 9,249,218 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
`DATE 6 or to a change of DUE DATE 7. If the parties stipulate to an
`extension of DUE DATE 4, with respect to motions for observation and
`motions to exclude evidence, any request for oral hearing must still be filed
`by the date set forth in this Order to provide sufficient time for the Board to
`accommodate the hearing request and issue a Hearing Order.
`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.
`
`
`
`
`
`2
`
`
`
`IPR2017-02019 (Patent 6,339,142 B1)
`IPR2017-02020 (Patent 9,249,218 B2)
`
`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
`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 a response, 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.
`
`
`
`
`3
`
`
`
`IPR2017-02019 (Patent 6,339,142 B1)
`IPR2017-02020 (Patent 9,249,218 B2)
`
`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
`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).
`
`
`
`
`4
`
`
`
`IPR2017-02019 (Patent 6,339,142 B1)
`IPR2017-02020 (Patent 9,249,218 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. Id.
`
`C. OBSERVATIONS ON CROSS-EXAMINATION
`
`Observations on cross-examination provide 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 observations 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.
`
`D.
`
`PROTECTIVE ORDER
`
`A protective order does not exist in a proceeding until one is approved
`
`and entered by the Board. The parties are reminded of the requirement for a
`protective order when filing a motion to seal. 37 C.F.R. §42.54. If the
`parties have agreed to a proposed protective order, including the Standing
`Default Protective Order, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012), they
`should file a signed copy of the proposed protective order with the motion to
`seal. If the parties choose to propose a protective order other than, or
`deviating from, the default Standing Protective Order, they must submit a
`joint, proposed protective order. A marked-up comparison or red-lined
`version of the default protective order in Appendix B to the Board’s Office
`Patent Trial Practice Guide should be presented with the motion to seal so
`
`
`
`
`5
`
`
`
`IPR2017-02019 (Patent 6,339,142 B1)
`IPR2017-02020 (Patent 9,249,218 B2)
`
`that differences can be understood readily.
`
`E. 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.
`Regarding discovery disputes, the parties are encouraged to resolve
`such issues on their own and in accordance with the precepts set forth in 37
`C.F.R. § 42.1(b). To the extent that a dispute arises between the parties
`relating to discovery, the parties should meet and confer to resolve such a
`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 to
`discuss the issue and, if necessary, seek authorization to file a motion in that
`regard. An email requesting a conference call shall: (a) copy the other party,
`(b) indicate generally the subject matter of the conference call and relief
`requested, (c) state whether the opposing party opposes the request, and (d)
`include multiple times when all parties are available for a conference. The
`email shall not contain substantive argument. See Technical Issue No. 3,
`https://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`
`6
`
`
`
`IPR2017-02019 (Patent 6,339,142 B1)
`IPR2017-02020 (Patent 9,249,218 B2)
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ June 13, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................ Sep. 13, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ............................................................................. Oct. 15, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................. Oct. 23, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .............................................................................. Nov. 2, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................... Nov. 13, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .............................................................................. Dec. 4, 2018
`Oral argument (if requested)
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2017-02019 (Patent 6,339,142 B1)
`IPR2017-02020 (Patent 9,249,218 B2)
`
`PETITIONER:
`
`Amanda Hollis
`Karen Youkins
`Katherine Rhoades
`KIRKLAN & ELLIS LLP
`amanda.hollis@kirkland.com
`karen.younkins@kirkland.com
`katherine.rhoades@kirkland.com
`
`
`
`PATENT OWNER:
`
`David L. Cavanaugh
`Rebecca A. Whitfield
`Robert J. Gunther, Jr.
`WILMAR CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`rebecca.whitfield@wilmerhale.com
`Robert.Gunther@wilmerhale.com
`
`Adam R. Brausa
`DURIE TANGRI LLP
`abrausa@durietangri.com
`
`
`
`
`
`8
`
`
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