throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 15
`Entered: February 25, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ELI LILLY AND COMPANY,
`Petitioner,
`
`v.
`
`TEVA PHARMACEUTICALS INTERNATIONAL GMBH,
`Patent Owner.
`
`
`
`
` Case IPR2018-01422 (Patent 9,340,614 B2)
` Case IPR2018-01423 (Patent 9,266,951 B2)
` Case IPR2018-01424 (Patent 9,346,881 B2)
` Case IPR2018-01425 (Patent 9,890,210 B2)
` Case IPR2018-01426 (Patent 9,890,211 B2)
` Case IPR2018-01427 (Patent 8,597,649 B2)1
`
`
`
`
`
`
`
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`
`SMITH, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are common to all six cases. We, therefore, issue
`a single Order that has been entered in each case. The parties may use this style
`caption when filing a single paper in all six proceedings, provided that such
`caption includes a footnote attesting that “the word-for-word identical paper is
`filed in each proceeding identified in the caption.”
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`A. GENERAL INSTRUCTIONS
`
`1.
`
`Initial Conference Call
`
`An initial conference call is scheduled for March 25, 2019, at 2 p.m.
`
`EDT. The parties should be prepared to discuss proposed changes to this
`
`Scheduling Order or proposed motions, as well as any other procedural
`
`issues of concern. 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).
`
`2.
`
`Protective Order
`
`No protective order shall apply to any of these proceedings 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 any of these proceedings
`
`should be 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 any of these proceedings, and that a
`
`2
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`motion to expunge the information will not necessarily prevail over the
`
`public interest in maintaining a complete and understandable file history.
`
`See Practice Guide 48,761.
`
`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.
`
`4.
`
`Testimony
`
`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.
`
`5.
`
`Cross-Examination
`
`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.
`
`6.
`
`Oral Argument
`
`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
`
`3
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`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, Virginia.
`
`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.
`
`
`
`B. DUE DATES
`
`This order sets due dates for the parties to take action after institution
`
`of the proceedings. The parties may stipulate 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 an extension of DUE
`
`DATES 6 and 7, or to the requests for oral hearing.
`
`In stipulating 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 (§ 42.64(b)(2)), to conduct cross-examination
`
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`
`examination testimony.
`
`1. DUE DATE 1
`
`Patent Owner may file—
`
`4
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`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.
`
`b. A motion to amend the patent (37 C.F.R. § 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 C.F.R. § 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://go.usa.gov/xU6YV),
`
`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).
`
`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.
`
`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.
`
`Either party may file a motion to exclude evidence (37 C.F.R.
`
`§ 42.64(c)).
`
`5
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`Either party may file a request for oral argument (may not be extended
`
`by stipulation).
`
`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.
`
`
`
`C. 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
`
`6
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`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.
`
`
`
`
`
`7
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .......................................... March 25, 2019
`
`DUE DATE 1 ............................................................................ May 28, 2019
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ August 26, 2019
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. September 25, 2019
`
`Patent owner’s sur-reply to reply
`
`Patent owner’s reply to opposition to motion to amend
`
`DUE DATE 4 ...................................................................... October 25, 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 .................................................................... November 1, 2019
`
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... November 8, 2019
`
`Reply to opposition to motion to exclude
`
`Request for prehearing conference
`
`DUE DATE 7 .................................................................. November 22, 2019
`
`Oral argument (if requested)
`
`
`
`8
`
`

`

`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`PETITIONER:
`
`William B. Raich
`Erin M. Sommers
`Pier D. DeRoo
`Yieyie Yang
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`yieyie.yang@finnegan.com
`
`Sanjay M. Jivraj
`Mark J. Stewart
`Eli Lilly and Company
`jivraj_sanjay@lilly.com
`stewart_mark@lilly.com
`
`
`PATENT OWNER:
`
`Deborah A. Sterling
`Robert C. Millonig
`Gaby L. Longsworth
`Jeremiah B. Frueauf
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dsterling-PTAB@sternekessler.com
`bobm-PTAB@sternekessler.com
`glongs-PTAB@sternekessler.com
`jfrueauf-PTAB@sternekessler.com
`
`
`
`9
`
`

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