`571-272-7822
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` Paper No. 25
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` Entered: October 15, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC.,
`Patent Owners.
`
`
`Case IPR2018-00892
`Patent 9,326,945 B2
`____________
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
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`SCHEDULING ORDER
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`IPR2018-00892
`Patent 9,326,945 B2
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`A. GENERAL INSTRUCTIONS
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`1. Initial Conference Call
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`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions that have not been authorized in this Order or other
`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
`preparing for the initial conference call). A request for an initial conference
`call shall include a list of proposed motions, if any, to be discussed during
`the call.
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`2. Protective Order
`
`No protective order shall apply to this proceeding until the Board
`enters one. If either party files a motion to seal before entry of a protective
`order, a jointly proposed protective order shall be filed as an exhibit with the
`motion. The Board encourages the parties to adopt the Board’s default
`protective order if they conclude that a protective order is necessary. See
`Practice Guide, App’x B (Default Protective Order). 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 between the two and explain why good cause exists to deviate
`from the default protective order.
`The Board has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in this proceeding should be
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`IPR2018-00892
`Patent 9,326,945 B2
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`limited to the minimum amount necessary to protect confidential
`information, and 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 may become public if
`identified in a final written decision in this proceeding, 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 Practice
`Guide at 48,761.
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`3. Discovery Disputes
`
`The Board encourages parties to resolve disputes relating to discovery
`on their own. To the extent that a dispute arises between the parties relating
`to discovery, the parties must 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.
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`4. Testimony
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`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, 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.
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`IPR2018-00892
`Patent 9,326,945 B2
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`5. Cross-Examination
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`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental
`evidence is due. 37 C.F.R. § 42.53(d)(2).
`Cross-examination ordinarily 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.
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`6. Oral Argument
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`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Due Date Appendix.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria.
`The parties may request that the oral argument instead be held at the
`Detroit, Michigan, USPTO Regional Office; the Dallas, Texas, USPTO
`Regional Office; the Denver, Colorado, USPTO Regional Office; or the San
`Jose, California, USPTO Regional Office. The parties should meet and
`confer, and jointly propose the parties’ preference at the initial conference
`call, if requested. Alternatively, the parties may jointly file a paper stating
`their preference for the hearing location within one month of this order.
`Note that the Board may not be able to honor the parties’ preference of
`hearing location due to, among other things, the availability of hearing room
`resources and the needs of the panel. The Board will consider the location
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`Patent 9,326,945 B2
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`request and notify the parties accordingly if a request for change in location
`is granted.
`Seating in the Board’s hearing rooms may be limited, and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals will attend the argument on its behalf, the
`party should notify the Board as soon as possible, and no later than the
`request for oral argument. Parties should note that the earlier a request for
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
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`B. DUE DATES
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`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 the requests for oral hearing.
`In stipulating to different times, the parties should consider the effect
`of the stipulation on times to object to evidence (37 U.S.C. § 42.64(b)(1)), to
`supplement evidence (§ 42.64(b)(2)), to conduct cross-examination
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`examination testimony.
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`1. DUE DATE 1
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`Patent Owner may file—
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`Patent 9,326,945 B2
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`a. A response to the petition (37 U.S.C. § 42.120). If Patent Owner
`elects not to file a response, Patent Owner must arrange a conference call
`with the parties and the Board. Patent Owner is cautioned that any
`arguments for patentability not raised in the response may be deemed
`waived.
`b. A motion to amend the patent (37 U.S.C. § 42.121). 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. 37 U.S.C. § 42.121(a). To satisfy this requirement, Patent Owner
`should request a conference call with the Board no later than two weeks
`prior to DUE DATE 1. The parties are directed to the Board’s Guidance on
`Motions to Amend in view of Aqua Products
`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_
`to_amend_11_2017.pdf), and Western Digital Corp. v. SPEX Techs., Inc.,
`Case IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (providing
`information and guidance on motions to amend).
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`2. DUE DATE 2
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`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
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`3. DUE DATE 3
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`Patent Owner may file a sur-reply to Petitioner’s reply.
`Patent Owner may file a reply to the opposition to the motion to
`amend.
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`Patent 9,326,945 B2
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`4. DUE DATE 4
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`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend.
`Either party may file a motion to exclude evidence (37 U.S.C.
`§ 42.64(c)).
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`5. DUE DATE 5
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`Either party may file an opposition to a motion to exclude evidence.
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`6. DUE DATE 6
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`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`Either party may request that the Board hold a pre-hearing conference.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) shall be held on this
`date. Approximately one month prior to the argument, the Board will issue
`an order setting the start time of the hearing and the procedures that will
`govern the parties’ arguments.
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`IPR2018-00892
`Patent 9,326,945 B2
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`DUE DATE APPENDIX
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`DUE DATE 1 ........................................................................ January 15, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
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`DUE DATE 2 ............................................................................ April 15, 2019
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
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`DUE DATE 3 ............................................................................. May 15, 2019
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the
`petition
`Patent Owner’s reply to Petitioner’s opposition to the motion to amend
`DUE DATE 4 ............................................................................. June 17, 2019
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition
`to the motion to amend
`Motion to exclude evidence
`Request for oral argument (any stipulation between the parties
`extending Due Date 4 shall not apply to the request for oral
`argument)
`DUE DATE 5 ............................................................................. June 24, 2019
`Opposition to motion to exclude
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`DUE DATE 6 ................................................................................ July 1, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
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`IPR2018-00892
`Patent 9,326,945 B2
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`DUE DATE 7 .............................................................................. July 23, 2019
`Oral argument (if requested)
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`IPR2018-00892
`Patent 9,326,945 B2
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`PETITIONER:
`Robert L. Florence
`Sharad K. Bijanki
`Karen L. Carroll
`Michael L. Binns
`PARKER POE ADAMS & BERNSTEIN
`robertflorence@parkerpoe.com
`sharadbijanki@parkerpoe.com
`karencarroll@parkerpoe.com
`Michaelbinns@parkerpoe.com
`
`PATENT OWNER:
`Heather M. Petruzzi
`Timothy A. Cook
`Kevin M. Yurkerwich
`Michael E. Nelson
`Kevin S. Prussia
`Amy K. Wigmore
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`Heather.Petruzzi@wilmerhale.com
`Tim.Cook@wilmerhale.com
`Kevin.Yurkerwich@wilmerhale.com
`Michael.Nelson@wilmerhale.com
`Kevin.Prussia@wilmerhale.com
`Amy.Wigmore@wilmerhale.com
`
`Jason M. Okun
`FITZPATRICK, CELLA, HARPER & SCINTO
`JOkun@fchs.com
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