Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 70
`Date: November 8, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner.
`____________
`
`IPR2018-016801
`Patent 9,526,844 B2
`___________
`
`
`Before HYUN J. JUNG, BART A. GERSTENBLITH, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`REVISED SCHEDULING ORDER
`
`
`
`
`1 Pfizer Inc., who filed a petition in IPR2019-01022, has been joined as
`Petitioner in this proceeding.
`
`
`
`IPR2018-01680
`Patent 9,526,844 B2
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`A. REVISED MOTION TO AMEND
`1.
`Introduction
`On October 30, 2019, Patent Owner filed its Revised Contingent
`Motion to Amend (Paper 66, “Revised MTA”) in accordance with our
`Scheduling Order (Paper 23) and the March 15, 2019, Federal Register
`notice regarding a new pilot program relating to motion to amend practice at
`the Office. See 84 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot”). In
`accordance with the MTA Pilot, we revise our original April 3, 2019,
`Scheduling Order to set subsequent due dates based on the date Patent
`Owner filed the Revised MTA. See MTA Pilot, Appendix 1B (Revised
`MTA Timeline).
`In particular, this Revised Scheduling Order adds DUE DATES
`RMTA1 and RMTA2 and modifies and supercedes DUE DATE 4 and
`subsequent due dates as presented in our original Scheduling Order. Further,
`this Revised Scheduling Order supplements the instructions provided in our
`original Scheduling Order, including those discussing the content of the
`briefing related to the Revised MTA. To the extent that our original
`Scheduling Order provides instructions that are not addressed in this Revised
`Scheduling Order, the original instructions remain in effect.
`2.
`Evidence and Depositions
`Generally speaking, new evidence (including declarations) may be
`submitted with every paper related to the Revised MTA, except sur-replies.
`Specifically, both Petitioner’s opposition to the Revised MTA and Patent
`Owner’s reply to that opposition may be accompanied by new evidence that
`responds to issues raised in the preliminary guidance (if provided) or in the
`corresponding Revised MTA or opposition. Petitioner’s sur-reply may not
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`IPR2018-01680
`Patent 9,526,844 B2
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`be accompanied by new evidence other than deposition transcripts of the
`cross-examination of any reply witness.
`Once likely declarants are known, the parties should confer as to dates
`for scheduling all depositions related to the Revised MTA after the relevant
`papers will be filed. The Board expects parties to make their declarants
`available for such depositions promptly, and to make their attorneys
`available to take and defend such depositions; any unavailability will not be
`a reason to adjust the schedule for briefing on the Revised MTA absent
`extraordinary circumstances.
`If Petitioner submits a declaration with its opposition to the Revised
`MTA, or Patent Owner submits a declaration with its reply to that
`opposition, the party should typically make such declarant available for
`deposition within 1 week after filing that declaration. As needed, the parties
`may wish to agree to shortened periods for making objections and serving
`supplemental evidence prior to a deposition. See 37 C.F.R. §§ 42.53(d)(2),
`42.64(a) and (b). In the absence of such an agreement, the parties shall
`schedule such depositions in advance of a due date for serving supplemental
`evidence. If, after receving supplemental evidence, a party believes in good
`faith that the supplemental evidence requires further cross-examination of a
`declarant, the party should contact the Board for a conference call. Again, it
`is incumbent upon the parties to work cooperatively to schedule depositions
`of their declarants. Thus, the Board strongly encourages the parties to meet
`and confer as soon as practicable (including before anticipated declarations
`are submitted, if possible) to coordinate schedules.
`Because Patent Owner’s reply and Petitioner’s sur-reply as to the
`Revised MTA are due near or after motions to exclude are due, the parties
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`IPR2018-01680
`Patent 9,526,844 B2
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`might not have an opportunity to object to evidence submitted with the reply
`or sur-reply and file a motion to exclude such evidence before the oral
`hearing. See 37 CFR 42.64. Thus, if needed, a party may seek authorization
`to file a motion to exclude reply or surreply evidence after the oral hearing
`or may make an oral motion to exclude and argue such a motion at the oral
`hearing.
`
`B. DUE DATES
`This Order sets due dates for the parties to take action by DUE DATE
`RMTA1 and after. The parties may stipulate different dates for DUE
`DATES RMTA1, RMTA2, 5, and 6 (earlier or later, but no later than DUE
`DATE 7). 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 4, 7, and 8.
`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 RMTA1
`Petitioner may file an opposition to Patent Owner’s Revised MTA.
`Petitioner’s opposition to the Revised MTA may only respond to issues
`raised in the Revised MTA or the preliminary guidance (if provided).
`2. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
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`IPR2018-01680
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`3. DUE DATE RMTA2
`Patent Owner may file a reply to Petitioner’s opposition to the
`Revised MTA. Patent Owner’s rely to the opposition may only respond to
`issues raised in the opposition.
`4. DUE DATE 5
`Either party may file a motion to exclude evidence (37 C.F.R.
`§ 42.64(c)).
`5. DUE DATE 6
`Either party may file an opposition to a motion to exclude evidence.
`Either party may request that the Board hold a pre-hearing conference.
`6. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`opposition to the Revised MTA. Petitioner’s sur-reply may only respond to
`issues raised in the reply to the opposition.
`7. DUE DATE 8
`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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`IPR2018-01680
`Patent 9,526,844 B2
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`REVISED DUE DATE APPENDIX
`
`DUE DATE RMTA1 ........................................................ December 10, 2019
`Petitioner’s opposition to the revised motion to amend
`
`DUE DATE 4 .................................................................... December 19, 2019
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE RMTA2 ........................................................ December 31, 2019
`Patent Owner’s reply to the opposition to the revised motion to
`amend
`
`DUE DATE 5 .......................................................................... January 9, 2020
`Motion to exclude evidence
`
`DUE DATE 6 ........................................................................ January 16, 2020
`Opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ........................................................................ January 23, 2020
`Reply to opposition to motion to exclude
`Petitioner’s sur-reply to revised motion to amend
`
`DUE DATE 8 ........................................................................ February 5, 2020
`Oral Argument (if requested)
`
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`IPR2018-01680
`Patent 9,526,844 B2
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`For PETITIONER:
`
`Richard Torczon
`Wesley Derryberry
`Douglas Carsten
`Jeffrey Guise
`Nicole Stafford
`Lorelei Westin
`Tasha Thomas
`Franklin Chu
`Elham Steiner
`WILSON SONSINI GOODRICH & ROSATI
`rtorczon@wsgr.com
`wderryberry@wsgr.com
`dcarsten@wsgr.com
`jguise@wsgr.com
`nstafford@wsgr.com
`lwestin@wsgr.com
`tthomas@wsgr.com
`ychu@wsgr.com
`esteiner@wsgr.com
`
`
`
`
`
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`IPR2018-01680
`Patent 9,526,844 B2
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`For PATENT OWNER:
`
`Elizabeth Weiswasser
`Anish Desai
`Sudip Kundu
`Kathryn Kantha
`Adrian Percer
`Brian Chang
`William Ansley
`Matthew Seiger
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`sudip.kundu@weil.com
`kathryn.kantha@weil.com
`adrian.percer@weil.com
`brian.chang@weil.com
`sutton.ansley@weil.com
`matthew.seiger@weil.com
`
`W. Karl Renner
`John S. Goetz
`Joshua A. Griswold
`Kenneth W. Darby
`Matthew S. Colvin
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`anish.desai@weil.com
`goetz@fr.com
`griswold@fr.com
`kdarby@fr.com
`colvin@fr.com
`
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