Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 13
`Entered: February 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC,
`Patent Owner.
`____________
`
`Case IPR2018-01403
`Patent No. 8,399,514 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`Tel: 571-272-7822
`
`
`Paper 13
`Entered: February 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC,
`Patent Owner.
`____________
`
`Case IPR2018-01403
`Patent No. 8,399,514 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`A. 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), except
`for requesting oral argument by Due Date 4. 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 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).
`
`1. DUE DATE 1
`
`Patent Owner may file—
`a.
`A response to the petition (37 C.F.R. § 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.
`A motion to amend the patent (37 C.F.R. § 42.121). Patent
`b.
`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 C.F.R. § 42.121(a). To satisfy this requirement, Patent
`Owner should request a conference call with the Board no later than two
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`IPR2018-01403
`Patent No. 8,399,514 B2
`
`weeks prior to DUE DATE 1. The parties are directed to the Board’s
`Guidance on Motions to Amend in view of Aqua Products (available at
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_t
`o_amend_11_2017.pdf) and to Western Digital Corp. v. SPEX Techs., Inc.,
`No. IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (providing
`information and guidance on motions to amend).
`
`2. DUE DATE 2
`
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
`3. DUE DATE 3
`
`Patent Owner may file a sur-reply to Petitioner’s reply. See Trial
`Practice Guide Update, 14–15, available at https://go.usa.gov/xU7GP;
`see also 83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the
`availability of the Trial Practice Guide Update).
`Patent Owner may file a reply to the opposition to the motion to
`amend.
`
`4. DUE DATE 4
`
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the motion to amend. See Trial Practice Guide Update, 14–16.
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)). See Trial Practice Guide Update, 16–18.
`Either party may file a request for oral argument (37 C.F.R.
`§ 42.70(a)).
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`IPR2018-01403
`Patent No. 8,399,514 B2
`
`5. DUE DATE 5
`
`Either party may file an opposition to a motion to exclude evidence.
`
`6. DUE DATE 6
`
`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.
`
`7. DUE DATE 7
`
`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.
`
`B. INITIAL CONFERENCE CALL
`
`The parties are directed to contact the Board within a month of the
`Decision to Institute 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).
`
`C. TESTIMONY
`
`The parties are reminded that the Testimony Guidelines appended to
`the Office Patent Trial Practice Guide, 77 Fed. Reg.at 48,772 (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
`
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`IPR2018-01403
`Patent No. 8,399,514 B2
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`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.
`
`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. PROTECTIVE ORDER
`
`A protective order does not exist in this proceeding unless the parties
`file one and the Board approves it. If either party files a motion to seal
`before entry of a protective order, a jointly proposed protective order should
`be presented as an exhibit to the motion. We encourage the parties to adopt
`the Board’s default protective order if they conclude that a protective order
`is necessary. See Default Protective Order, Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48,769 (Appendix 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 redline
`comparison of the proposed and default protective orders showing the
`differences; and the parties must explain why the proposed deviations from
`the default protective order are necessary.
`The Board has a strong interest in the public availability of the
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`IPR2018-01403
`Patent No. 8,399,514 B2
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`proceedings. We advise the parties that redactions to documents filed in this
`proceeding should be limited 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 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 Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`F. MOTIONS TO SEAL
`
`A party intending a document or thing to be sealed shall file a motion
`to seal concurrent with the filing of the document or thing to be sealed.
`37 C.F.R. § 42.14.
`If seeking to file a portion of a document under seal, a redacted
`version of the document must be filed publicly.
`An unredacted version of the document must be filed confidentially
`(i.e., as available to the “Parties and Board Only”). The unredacted version
`must highlight or otherwise clearly indicate the portion(s) of the document
`that have been redacted in the redacted version.
`If the moving party is seeking to file under seal a document containing
`information designated confidential by the opposing party, the motion to seal
`must identify the party that has designated the material as confidential (“the
`designating party”). Within five business days, the designating party must
`file a response to the motion to seal that explains why the designated
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`IPR2018-01403
`Patent No. 8,399,514 B2
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`information is confidential or should otherwise be sealed.
`
`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.
`Finally, we refer the parties to the instructions 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. Specifically, an email requesting a
`conference call should copy the other party, indicate generally the relief
`being requested or the subject matter of the conference call, state whether
`the opposing party opposes the request, and include multiple times when all
`parties are available. The email may not contain substantive argument. The
`parties also are reminded that they should discuss and attempt to resolve
`issues with each other first before requesting conference calls with the
`Board.
`
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`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................... May 7, 2019
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................... August 7, 2019
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ..................................................................... September 9, 2019
`Patent owner’s sur-reply to reply
`Patent owner’s reply to opposition to motion to amend
`
`DUE DATE 4 ......................................................................... October 7, 2019
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ....................................................................... October 15, 2019
`Opposition to motion to exclude
`
`DUE DATE 6 ....................................................................... October 21, 2019
`Reply to opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 ................................................................... November 13, 2019
`Oral argument (if requested)
`
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`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`
`
`PETITIONER:
`Brandon White
`bmwhite@perkinscoie.com
`
`Emily Greb
`egreb@perkinscoie.com
`
`PATENT OWNER:
`Barbara McCurdy
`Barbara.mccurdy@finnegan.com
`
`Erin Sommers
`Erin.sommers@finnegan.com
`
`Pier DeRoo
`Pier.deroo@finnegan.com
`
`
`
`
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