Trials@uspto.gov
`571-272-7822
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`
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`Paper 22
`Entered: April 19, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B11
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`REVISED SCHEDULING ORDER
`
`
`1 This Order addresses issues that are common to each of the above-
`referenced cases. We exercise our discretion to issue one Order to be filed
`in each case. The parties are not authorized to use this style of heading.
`
`
`571-272-7822
`
`
`
`Paper 22
`Entered: April 19, 2018
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`
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B11
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`REVISED SCHEDULING ORDER
`
`
`1 This Order addresses issues that are common to each of the above-
`referenced cases. We exercise our discretion to issue one Order to be filed
`in each case. The parties are not authorized to use this style of heading.
`
`
`
`IPR2017-02031
`IPR2017-02032
`Patent 6,407,213 B1
`
`
`The Appendix to this Order sets due dates for the parties to take action
`
`after institution of these proceedings. 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
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`due dates, must be promptly filed. The parties may not stipulate to an
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`extension of DUE DATE 6 or to any change in DUE DATE 7. In addition,
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`even if the parties stipulate to an extension of DUE DATE 4, any request for
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`oral hearing must still be filed on or before the date set forth in this Order, to
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`provide sufficient time for the Board to accommodate the hearing.
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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 D, below).
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug.
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`14, 2012) (Appendix D), apply to this proceeding. The Board may impose
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`an appropriate sanction for failure to adhere to the Testimony Guidelines.
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`37 C.F.R. § 42.12. For example, reasonable expenses and attorneys’ fees
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`incurred by any party may be levied on a person who impedes, delays, or
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`frustrates the fair examination of a witness.
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`A. INITIAL CONFERENCE CALL
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`The parties are directed to contact the Board within a month of this
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`Order if there is a need to discuss proposed changes to this Order or
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`proposed motions. See Office Patent Trial Practice Guide, 77 Fed. Reg.
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`
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`2
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`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B1
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`48,756, 48,765–66 (Aug. 14, 2012) (guidance in preparing for the initial
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`conference call).
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`B. PROTECTIVE ORDER
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`1. Confidential Information
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`The parties must file confidential information using the appropriate
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`availability indicator in PTAB E2E, regardless of whose confidential
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`information it is. It is the responsibility of the party whose confidential
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`information is at issue, not necessarily the proffering party, to file the motion
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`to seal.
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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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`Patent Trial Practice Guide, 77 Fed. Reg. at 48,769–71, App. B.
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`If the parties choose to propose a protective order deviating from the
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`default protective order, they should submit the proposed protective order
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`jointly. A marked-up comparison of the proposed and default protective
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`orders should be presented as an additional exhibit to the motion to seal, so
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`3
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`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B1
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`that differences can be understood readily. The parties should contact the
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`Board if they cannot agree on the terms of the proposed protective order.
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`2. Redactions
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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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`3. Confidential Information in Final Written Decisions
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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 prevail necessarily 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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`C. DUE DATES
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`1. DUE DATE 1
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`The patent owner may file—
`
`a.
`
`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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`4
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`Case IPR2017-02032
`Patent 6,407,213 B1
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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 E, below) by DUE DATE 4.
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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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`5
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`Patent 6,407,213 B1
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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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`D. 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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`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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`E. 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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`F. MOTION TO AMEND
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`
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`The Federal Circuit’s Aqua Products decision instructs us to “assess[]
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`the patentability of the proposed substitute claims without placing the
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`burden of persuasion on the patent owner.” Aqua Products v. Matal, 872
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`6
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`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B1
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`F.3d 1290, 1328. Consistent with Guidance issued by the Chief Judge, the
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`statutory and regulatory requirements for a motion to amend under
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`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, as well as the duty of candor
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`under 37 C.F.R. § 42.11, remain applicable. See “Guidance on Motions to
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`Amend in view of Aqua Products”
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`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_
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`to_amend_11_2017.pdf) (Nov. 21, 2017).
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`The patent owner must confer with the Board before filing any
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`Motion to Amend. See 37 C.F.R. § 42.121(a). A conference call to satisfy
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`the 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, and preferably within one month
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`of this Order.
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`
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`G. COMMUNICATIONS WITH THE BOARD
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`Except as otherwise provided in the Rules, Board authorization is
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`required before filing a motion. 37 C.F.R. § 42.20(b). A party seeking to file
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`a non-preauthorized motion should request a conference to obtain
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`authorization to file the motion. Parties may request a conference with us by
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`contacting the Board staff by e-mail at Trials@uspto.gov or by telephone at
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`571-272-7822.
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`Regarding discovery disputes, the parties are encouraged to resolve
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`such issues 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 should meet and confer to resolve such a
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`dispute before contacting the Board. If attempts to resolve the dispute fail, a
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`party may request a conference call with the Board and the other party to
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`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B1
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`discuss the issue and, if necessary, seek authorization to file a motion in that
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`regard. An email requesting a conference call shall: (a) copy the other party,
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`(b) indicate generally the subject matter of the conference call and relief
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`requested, (c) state whether the opposing party opposes the request, and (d)
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`include multiple times when all parties are available for a conference. The
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`email shall not contain substantive argument.
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`DUE DATE APPENDIX
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`DUE DATE 1 .................................................................. June 26, 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 .......................................................... September 18, 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 ..............................................................October 16, 2018
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ............................................................ November 6, 2018
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`Observations 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 ........................................................... November 20, 2018
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`Response to observations
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`Opposition to motion to exclude
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`8
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`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B1
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`DUE DATE 6 ......................................................... November 27, 2018
`Reply to opposition to motion to exclude
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`DUE DATE 7 .......................................................... December 13, 2018
`Oral argument (if requested).
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`9
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`Case IPR2017-02031
`Case IPR2017-02032
`Patent 6,407,213 B1
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`PETITIONER:
`
`Ire J. Levy
`Brian A. Fairchild
`GOODWIN PROCTER LLP
`ilevy@goodwinlaw.com
`bfairchild@goodwinlaw.com
`
`
`PATENT OWNER:
`
`David L. Cavanaugh
`Rebecca A. Whitfield
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`Rebecca.Whitfield@wilmerhale.com
`
`
`Adam R. Brausa
`DURIE TANGRI LLP
`abrausa@durietangri.com
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