Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: June 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SANOFI PASTEUR INC. AND SK CHEMICALS CO., LTD.,
`Petitioner,
`
`v.
`
`PFIZER INC.,
`Patent Owner.
`
`Case IPR2018-00187
`Patent 9,492,559 B2
`
`
`Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: June 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SANOFI PASTEUR INC. AND SK CHEMICALS CO., LTD.,
`Petitioner,
`
`v.
`
`PFIZER INC.,
`Patent Owner.
`
`Case IPR2018-00187
`Patent 9,492,559 B2
`
`
`Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00187
`Patent 9,492,559 B2
`
`
`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 due dates, must be promptly filed. The
`
`parties may not stipulate to an extension of DUE DATES 6 and 7. In
`
`addition, even if the parties stipulate to an extension of DUE DATE 4,
`
`any request for oral hearing must still be filed on or before the date set
`
`forth in this Order, to provide sufficient time for the Board to
`
`accommodate the hearing.
`
`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 D, 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
`
`2
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`
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`IPR2018-00187
`Patent 9,492,559 B2
`
`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 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).
`
`B. PROTECTIVE ORDER
`
`1. Confidential Information
`
`The parties must file confidential information using the
`
`appropriate availability indicator in PTAB E2E, regardless of whose
`
`confidential information it is. It is the responsibility of the party
`
`whose confidential information is at issue, not necessarily the
`
`proffering party, to file the motion to seal.
`
`A protective order does not exist in a case until one is filed in
`
`the case and is approved by the Board. If a motion to seal is filed by
`
`either party, the proposed protective order should be presented as an
`
`exhibit to the motion. The motion to seal must include a certification
`
`that the moving party has in good faith conferred or attempted to
`
`confer with other affected parties in an effort to resolve any dispute.
`
`See 37 C.F.R. 42.54(a).
`
`The parties are urged to operate under the Board’s default
`
`protective order, should that become necessary. See Default
`
`3
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`
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`IPR2018-00187
`Patent 9,492,559 B2
`
`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 should submit the proposed
`
`protective order jointly. A marked-up comparison of the proposed
`
`and default protective orders should be presented as an additional
`
`exhibit to the motion to seal, so that differences can be understood
`
`readily. The parties should contact the Board if they cannot agree on
`
`the terms of the proposed protective order.
`
`2. Redactions
`
`Redactions should be limited strictly to isolated passages
`
`consisting entirely of confidential information. The thrust of the
`
`underlying argument or evidence must be clearly discernable from the
`
`redacted version.
`
`3. Confidential Information in Final Written Decisions
`
`Information subject to a protective order will become public if
`
`identified in a final written decision in this proceeding. A motion to
`
`expunge the information will not prevail necessarily over the public
`
`interest in maintaining a complete and understandable file history.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`C. DUE DATES
`
`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`A motion to amend the patent (37 C.F.R. § 42.121).
`
`4
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`
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`IPR2018-00187
`Patent 9,492,559 B2
`
`
`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 observations on the cross-
`
`examination testimony of a reply witness (see section E, below) by
`
`DUE DATE 4.
`
`b.
`
`Each party must file any motion to exclude evidence (37
`
`C.F.R § 42.64(c)) by DUE DATE 4.
`
`c. Each party must file any request for oral argument (37
`
`C.F.R. § 42.70(a)) by DUE DATE 4. As noted above, DUE DATE 4
`
`is not extendible with respect to any request for oral argument.
`
`5. DUE DATE 5
`
`a.
`
`Each party must file any response to an observation on
`
`cross-examination testimony by DUE DATE 5.
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`5
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`IPR2018-00187
`Patent 9,492,559 B2
`
`
`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.
`
`D. 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.
`
`E. 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. at 48,768 (Aug. 14, 2012). The
`
`observation must be a concise statement of the relevance of precisely
`
`identified testimony to a precisely identified argument or portion of an
`
`6
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`IPR2018-00187
`Patent 9,492,559 B2
`
`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.
`
`F. MOTION TO AMEND
`
`
`
`Although the filing of a Motion to Amend is authorized under
`
`our Rules, the patent owner must confer with the Board before filing
`
`any Motion to Amend. See 37 C.F.R. § 42.121(a). A conference call
`
`to satisfy the requirement of 37 C.F.R. § 42.121(a) must be scheduled
`
`no less than ten (10) business days prior to DUE DATE 1.
`
`G. 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
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`7
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`IPR2018-00187
`Patent 9,492,559 B2
`
`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.
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`8
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`IPR2018-00187
`Patent 9,492,559 B2
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL (upon request)
`
`DUE DATE 1 ......................................................................... August 28, 2018
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ................................................................... November 16, 2018
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................... December 18, 2018
`
`Patent owner’s reply to petitioner’s opposition to motion to
`
`amend
`
`DUE DATE 4 .......................................................................... January 8, 2019
`
`Observations regarding cross-examination of reply witness
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ......................................................................... January 22, 2019
`
`Response to observations
`
`Opposition to motion to exclude
`
`DUE DATE 6 ....................................................................... January 29, 2019
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ..................................................................... February 12, 2019
`Oral argument (if requested).
`
`
`9
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`
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`IPR2018-00187
`Patent 9,492,559 B2
`
`
`
`
`PETITIONER:
`
`Fangli Chen
`Siegmund Gutman
`Andrej Barbic
`PROSKAUER ROSE LLP
`fchenptabmatters@proskauer.com
`sgutmanptabmatters@porskauer.com
`abarbic@proskauer.com
`
`
`PATENT OWENER:
`
`John Scheibeler
`Dimitrios T. Drivas
`Anita Varma
`Brendan Gavin
`Eric A. Krause
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`ddrivas@whitecase.com
`anita.varma@whitecase.com
`brendan.gavin@whitecase.com
`eric.krause@whitecase.com
`
`
`
`
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`10
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