Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 10
`Entered: April 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MODERNATX, INC.,
`Petitioner,
`
`v.
`
`CUREVAC AG,
`Patent Owner.
`_______________
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`________________
`
`
`
`Before JAMES T. MOORE, SUSAN L. C. MITCHELL, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`571-272-7822
`
`
`
` Paper No. 10
`Entered: April 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`MODERNATX, INC.,
`Petitioner,
`
`v.
`
`CUREVAC AG,
`Patent Owner.
`_______________
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`________________
`
`
`
`Before JAMES T. MOORE, SUSAN L. C. MITCHELL, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`
`I. 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, or to an extension of the Request for Oral Argument date.
`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 (id. § 42.64(b)(2)), to conduct cross-examination (id.
`§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony (see section II, 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. See 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.
`
`A. INITIAL CONFERENCE CALL
` The parties are directed to contact the Board via e-mail at
`Trials@uspto.gov within one month of the date of this Scheduling Order if
`there is a need to discuss proposed changes to this Scheduling Order or
`proposed motions with the Board. 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
`
`
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`
`
`B. 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 (id. § 42.121).
`The patent owner must file any such response or motion to amend by
`DUE DATE 1. The patent owner is reminded that it must confer with the
`Board before filing a motion to amend. Id. § 42.121(a). The patent owner
`should contact the Board to request any such conference in sufficient time to
`ensure that the conference is conducted at least two weeks before DUE
`DATE 1. If the patent owner elects not to file either a response to the
`petition or a motion to amend, 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, or any evidence not
`referred to, are deemed waived.
`
`C. 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.
`
`D. 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.
`
`E. DUE DATE 4
`a.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section III, below) by
`DUE DATE 4.
`
`
`
`3
`
`
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`
`
`Each party must file any motion to exclude evidence (37 C.F.R
`b.
`§ 42.64(c)) by DUE DATE 4. Any request for oral argument (id. § 42.70(a))
`must also be filed by this date.
`
`F. DUE DATE 5
`a.
`Each party must file any reply 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.
`
`G. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`H. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`II. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination begins after any supplemental evidence is
`due. See 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. See id.
`
`
`
`
`
`
`4
`
`
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`
`III. OBSERVATIONS ON CROSS-EXAMINATION
`Observations 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. 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. The opposing party may respond to the observation. Any
`response must be equally concise and specific.
`
`IV. MOTION TO AMEND
`Patent Owner may file a motion to amend without prior authorization
`from the Board. Nevertheless, Patent Owner must confer with the Board
`before filing such a motion. See 37 C.F.R. § 42.121(a). Patent Owner
`should arrange for a conference call with the panel and opposing counsel at
`least two weeks before DUE DATE 1 in order to satisfy this requirement.
`
`Under 37 C.F.R. §§ 42.24 and 42.121, a motion to amend, if filed in
`this proceeding, as well as petitioner’s opposition to the motion to amend,
`each are limited to twenty-five (25) pages; patent owner’s reply to the
`opposition to the motion to amend is limited to twelve (12) pages; and the
`claim listing may be contained in an appendix to the motion to amend, and
`does not count toward the page limit of the motion. See Amendments to the
`Rules of Practice for Trials Before the Patent Trial and Appeal Board,
`80 Fed. Reg. 28,561, 28,565–66 (Final Rule) (May 19, 2015).
`
`
`
`
`
`
`5
`
`
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`Case IPR2017-02194
`Patent 8,383,340 B2
`
`V. INTERLOCUTORY DISPUTES
`To the extent that a dispute arises between the parties during the trial,
`the parties shall meet and confer to resolve such 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 in order to seek
`authorization to move for relief. In any request for a conference call with
`the Board, the requesting party shall: (a) certify that it has conferred with
`the other party in an effort to resolve the dispute; (b) identify with specificity
`the issues for which agreement has not been reached; (c) identify the precise
`relief to be sought; and (d) propose specific dates and times at which both
`parties are available for the conference call. The parties should refer to
`Technical Issue 3 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.
`
`
`
`
`6
`
`
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`
`
`DUE DATE APPENDIX
`INITIAL CONFERENCE CALL .............................................. Upon Request
`DUE DATE 1 .............................................................................. July 18, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`DUE DATE 2 ....................................................................... October 18, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ................................................................... November 19, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................... December 10, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`
`
`REQUEST FOR ORAL ARGUMENT………………… December 10, 2018
`DUE DATE 5 ................................................................... December 21, 2018
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 .......................................................................... January 3, 2019
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ........................................................................ January 14, 2019
`Oral argument (if requested)
`
`
`
`
`
`
`7
`
`
`
`Case IPR2017-02194
`Patent 8,383,340 B2
`
`FOR PETITIONER:
`
`Eldora Ellison
`David Roadcap
`Olga Partington
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison-ptab@sternekessler.com
`droadcap-ptab@sternekessler.com
`opartington-ptab@sternekessler.com
`
`
`FOR PATENT OWNER:
`
`Teresa Rea
`Deborah Yellin
`CROWELL & MORING LLP
`trea@crowell.com
`dyellin@crowell.com
`
`David L. Parker
`Marshall P. Byrd
`PARKER HIGHLANDER PLLC
`dparker@phiplaw.com
`mbyrd@phiplaw.com
`
`
`
`
`
`
`
`
`8
`
`
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