Trials@uspto.gov Paper No. 7
` Entered: March 30, 2018
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER BIOMET HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`FOUR MILE BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00052
`Patent 9,308,093 B2
`____________
`
`
`Before JOSIAH C. COCKS, GEORGE R. HOSKINS, and FRANCES L.
`IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
` Entered: March 30, 2018
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER BIOMET HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`FOUR MILE BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00052
`Patent 9,308,093 B2
`____________
`
`
`Before JOSIAH C. COCKS, GEORGE R. HOSKINS, and FRANCES L.
`IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2018-00052
`Patent 9,308,093 B2
`
`A. GENERAL INSTRUCTIONS
`1. Requests for an Initial Conference Call
`Unless at least one of the parties requests otherwise, we will not
`conduct an initial conference call as described in the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). In lieu of
`such a call, we instruct the parties as follows:
`a. If a party wishes to request an initial conference call, that party
`shall request the call no later than 25 days after the institution of
`trial;
`b. A request for a conference call shall include: (a) a list of proposed
`motions, if any, to be discussed during the call and (b) a list of
`dates and times when the parties are available for the call; and
`c. The parties shall be prepared to discuss during the initial
`conference call their concerns, if any, relating to the schedule in
`these proceeding as set forth below.
`Absent good cause shown, we will not conduct an initial conference call
`later than 30 days after the institution of a trial.
`2. Protective Order
`A protective order does not exist in these proceedings unless the
`parties file one and the Board approves it. We encourage the parties to adopt
`the Board’s default protective order. See Default Protective Order, Office
`Patent Trial Practice Guide, 77 Fed. Reg. at 48,769–71 (App. B). If the
`parties choose to propose a protective order deviating from the default
`protective order, they must submit the proposed protective order jointly
`along with a marked-up comparison of the proposed and default protective
`orders showing the differences.
`
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`IPR2018-00052
`Patent 9,308,093 B2
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`The Board has a strong interest in the public availability of the
`proceedings. We advise the parties that redactions to documents filed in
`these proceedings should be limited strictly to isolated passages consisting
`entirely of confidential information, and that the thrust of the underlying
`argument or evidence must be clearly discernible from the redacted versions.
`We also advise the parties that information subject to a protective order will
`become public if identified in a final written decision in these proceedings,
`and that a motion to expunge the information will not necessarily prevail
`over the public interest in maintaining a complete and understandable file
`history. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`3. Motion to Amend
`Patent Owner may file a Motion to Amend without prior authorization
`from the Board. Nevertheless, the Patent Owner must confer with the Board
`before filing such a motion. 37 C.F.R. § 42.121(a). We direct the parties to
`the Board’s website for representative decisions relating to Motions to Amend
`among other topics. The parties may access these representative decisions at:
`http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp.
`4. Discovery Disputes
`The Board encourages parties to resolve disputes relating to discovery
`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 shall 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 in order to seek
`authorization to move for relief.
`
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`IPR2018-00052
`Patent 9,308,093 B2
`
`
`In any request for a conference call with the Board to resolve a
`discovery dispute, 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.
`5. Depositions
`The parties are advised that the Testimony Guidelines appended to the
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,772–73 (App. D),
`apply to these proceedings. 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.
`Whenever a party submits a deposition transcript as an exhibit in these
`proceedings, the submitting party shall file the full transcript of the
`deposition rather than excerpts of only those portions being cited. After a
`deposition transcript has been submitted as an exhibit, all parties who
`subsequently cite to portions of the transcript shall cite to the first-filed
`exhibit rather than submitting another copy of the same transcript.
`6. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`a. Cross-examination begins after any supplemental evidence is due.
`37 C.F.R. § 42.53(d)(2).
`
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`IPR2018-00052
`Patent 9,308,093 B2
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`b. 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.
`7. 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 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.
`
`B. 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.
`Regardless of whether the parties stipulate to a change of DUE
`DATE 4, for Board planning purposes, requests for oral argument must be
`filed no later than the date set forth in this order for DUE DATE 4.
`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-
`
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`IPR2018-00052
`Patent 9,308,093 B2
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony (see section A.6, above).
`1. 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.
`2. 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.
`3. 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.
`4. DUE DATE 4
`a. Each party must file any motion for an observation on the cross-
`examination testimony of a reply witness (see section A.7, above)
`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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`IPR2018-00052
`Patent 9,308,093 B2
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`5. DUE DATE 5
`a. Each party must file any reply to a petitioner 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.
`6. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`7. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`The panel is available to hear oral argument, if requested, at the
`USPTO main office in Alexandria, Virginia.
`
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`IPR2018-00052
`Patent 9,308,093 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL……………………………...Upon Request
`
`DUE DATE 1 ............................................................................... July 2, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... October 1, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ....................................................................... October 30, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... November 20, 2018
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ...................................................................... December 4, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... December 11, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 .......................................................................... January 4, 2019
`Oral argument (if requested)
`
`
`
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`IPR2018-00052
`Patent 9,308,093 B2
`
`PETITIONER:
`Naveen Modi
`Young Park
`Paromita Chatterjee
`PAUL HASTINGS, LLP
`naveenmodi@paulhastings.com
`youngpark@paulhastings.com
`mitachatterjee@paulhastings.com
`
`
`PATENT OWNER:
`
`Philip S. Lyren
`EAGLE IP LIMITED
`philip_lyren@yahoo.com
`
`
`
`9
`
`
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