`Tel: 571-272-7822
`
`
`
`Paper 8
`Entered: February 8, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUBILANT DRAXIMAGE INC.,
`Petitioner,
`
`v.
`
`BRACCO DIAGNOSTICS INC.,
`Patent Owner.
`____________
`
`Cases1
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`____________
`
`
`Before HYUN J. JUNG, GEORGE R. HOSKINS, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5(a)
`
`This Order sets a schedule for trial, including due dates for the parties
`
`to take action upon entry of the Decision to Institute. See Appendix. The
`
`
`1 The parties are not authorized to use a caption identifying multiple
`proceedings.
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`trial will be administered in a just, speedy, and inexpensive manner such that
`pendency before the Board is no more than one year after institution. 37
`C.F.R. §§ 42.1(b) and 42.100(c).
`
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
`An initial conference call will be scheduled only upon request by
`either party within thirty (30) days of this Order. To request a conference
`call, the parties should consult with each other and submit a list of proposed
`dates and times for the call. If an initial conference call is scheduled, the
`parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012) (“Trial Practice Guide”), for guidance in
`preparing for the call, and should be prepared to discuss any proposed
`changes to the schedule and any motions the parties anticipate filing during
`the trial.
`2. Meet and Confer Requirement
`The parties are encouraged to engage in meaningful discussions
`before seeking authorization under 37 C.F.R. § 42.20(b) to file a motion for
`relief with the Board. At a minimum, before requesting authorization, the
`parties shall confer with each other in a good-faith effort to resolve the issue
`for which relief is to be sought. Only if the parties cannot resolve the issue
`on their own may a party request a conference call with the Board in order to
`seek authorization to move for relief. In any request for a conference call
`with the Board, the requesting party shall: (1) certify that it has in good-
`faith conferred (or attempted to confer, if the request is a time-sensitive
`
`2
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`emergency) with the other party in an effort to resolve the issue; (2) identify
`with specificity, but without argument, the issue for which agreement has
`not been reached; (3) state the precise relief to be sought; and (4) propose
`specific dates and times for which both parties are available for the
`conference call.
`3. 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 should be presented as an exhibit
`to 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 Default Protective Order, Trial Practice Guide, 77 Fed. Reg. at 48,756
`(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 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
`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
`
`3
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`in maintaining a complete and understandable file history. See Trial Practice
`Guide, 77 Fed. Reg. at 48,761.
`4. Cross-Examination Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Trial Practice Guide, 77 Fed. Reg. at 48,772 (App. D), apply to this
`proceeding. The Board may impose an appropriate sanction on any party
`who fails to adhere to the Testimony Guidelines, including reasonable
`expenses and attorney fees incurred by a party affected by another party’s
`misconduct. 37 C.F.R. § 42.12.
`Except as the parties might otherwise agree, for each due date—
`(1) cross-examination of a witness begins after any supplemental evidence is
`due; and (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. 37 C.F.R. § 42.53(d)(2). Should a party submit a deposition
`transcript of a witness’s testimony as an exhibit in this proceeding, the
`submitting party shall file the full transcript of the testimony 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.
`5. 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
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth in the Appendix hereto.
`
`4
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the United States Patent and Trademark Office
`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. The 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
`The Appendix specifies due dates for the parties to take action in this
`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 any
`stipulation, specifically identifying the changed due dates, must be filed
`promptly with the Board. 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.
`1. Due Date 1
`The patent owner may file—
`a. A response to the petition (37 C.F.R. § 42.120), and
`
`
`
`
`5
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`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
`and fully briefed in the response will be deemed waived.
`The 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). To
`satisfy this requirement, the 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, which can be found at
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions
`_to_amend_11_2017.pdf. In addition, the parties are directed to the Board’s
`decision in Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-
`00082 (PTAB April 25, 2018) (Paper 13) (informative), which provides
`guidance on motions to amend.
`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 sur-reply to the petitioner’s reply and
`
`any reply to the petitioner’s opposition to any motion to amend by DUE
`DATE 3.
`
`6
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`
`4. Due Date 4
`The petitioner must file any sur-reply to the patent owner’s reply to
`the opposition to the motion to amend, and 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.
`5. Due Date 5
`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.
`
`Either party may file a request for a pre-hearing conference.
`7. Due Date 7
`If requested by either party, an oral hearing will be held on DUE
`DATE 7.
`
`
`
`
`7
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`
`APPENDIX
`
`INITIAL CONFERENCE CALL ............................................. Upon Request
`
`DUE DATE 1 ............................................................................... May 8, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................... August 8, 2019
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ..................................................................... September 9, 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 ......................................................................... October 8, 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 (parties may not stipulate to an
`extension for the request for oral argument)
`
`DUE DATE 5 ....................................................................... October 15, 2019
`Opposition to motion to exclude
`
`8
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`DUE DATE 6 ....................................................................... October 22, 2019
`Reply to opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ..................................................................... November 6, 2019
`Oral argument (if requested)
`
`
`
`For PETITIONER:
`Robert Hails
`T. Cy Walker
`Theresa Weisenberger
`BAKERHOSTETLER
`rhails@bakerlaw.com
`cwalker@bakerlaw.com
`tweisenberger@bakerlaw.com
`
`For PATENT OWNER:
`Barry Schindler
`Heath Briggs
`Lennie Bersh
`GREENBERG TRAURIG, LLP
`SchindlerB@gtlaw.com
`BriggsH@gtlaw.com
`BershL@gtlaw.com
`
`
`9
`
`