Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 8
`Entered: October 2, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00880
`Patent 7,490,749 B2
`_______________
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`35 U.S.C. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 8
`Entered: October 2, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00880
`Patent 7,490,749 B2
`_______________
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`35 U.S.C. § 42.5
`
`
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`A. GENERAL INSTRUCTIONS
`1. Initial Conference Call
`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.
`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
`Office Patent Trial Practice Guide, July 2019 Update, App’x B (July 16,
`2019).1 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. See id.
`
`
`1 Available at https://www.uspto.gov/sites/default/files/documents/trial-
`practice-guide-update3.pdf
`
`
`
`2
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`IPR2019-00880
`Patent 7,490,749 B2
`
`
`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
`in maintaining a complete and understandable file history. See Practice
`Guide 48,761.
`3. Discovery and Other Disputes
`The Board encourages parties to resolve disputes on their own. If a
`dispute arises between the parties, 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.
`In any request for a conference call with the Board to resolve a
`dispute, the requesting party shall: (a) certify that it has conferred with the
`other party in an effort to resolve the dispute; (b) identify the precise relief to
`be sought; and (c) propose specific dates and times at which both parties are
`available for the conference call.
`4. Testimony
`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. Reasonable expenses and attorneys’ fees incurred by any
`
`
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`3
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`IPR2019-00880
`Patent 7,490,749 B2
`
`party may be levied on a person who impedes, delays, or frustrates the fair
`examination of a witness.
`Whenever a party submits a deposition transcript as an exhibit in this
`proceeding, the submitting party shall file the full transcript of the deposition
`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. Cross-Examination
`Except as the parties might otherwise agree, for each due date—
`1.
`Cross-examination ordinarily takes place after any
`supplemental evidence is due. 37 C.F.R. § 42.53(d)(2).
`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. Motion to Amend
`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). Patent Owner should
`arrange for a conference call with the panel and opposing counsel at least
`two weeks before DUE DATE 1 in order to satisfy the conferral
`requirement. See Section B below regarding DUE DATES.
`Patent Owner has the option to receive preliminary guidance from the
`Board on its motion to amend. See Notice Regarding a New Pilot Program
`Concerning Motion to Amend Practice and Procedures in Trial Proceedings
`under the America Invents Act before the Patent Trial and Appeal Board, 84
`
`
`
`4
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`
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`IPR2019-00880
`Patent 7,490,749 B2
`
`Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”). If Patent
`Owner elects to request preliminary guidance from the Board on its motion,
`it must do so in its motion to amend filed on DUE DATE 1.
`Any motion to amend and briefing related to such a motion shall
`generally follow the practices and procedures described in the MTA Pilot
`Program Notice unless otherwise ordered by the Board in this proceeding.
`The parties are further directed to the Board’s Guidance on Motions to
`Amend in view of Aqua Products (https://go.usa.gov/xU6YV), and
`Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129 (Paper 15) (PTAB
`Feb. 25, 2019) (precedential).
`As indicated in the MTA Pilot Program Notice, Patent Owner has the
`option at DUE DATE 3 to file a revised motion to amend (instead of a reply,
`as noted above) after receiving petitioner’s opposition to the original motion
`to amend and/or after receiving the Board’s preliminary guidance (if
`requested). A revised motion to amend must provide amendments,
`arguments, and/or evidence in a manner that is responsive to issues raised in
`the preliminary guidance and/or petitioner’s opposition.
`If Patent Owner files a revised motion to amend, the Board shall enter
`a revised scheduling order setting the briefing schedule for that revised
`motion and adjusting other due dates as needed. See MTA Pilot Program
`Notice, App’x B 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary board guidance on the motion to amend and the Patent
`Owner does not file either a reply to the opposition to the motion to amend
`or a revised motion to amend at Due Date 3, Petitioner may file a reply to
`the Board’s preliminary guidance, no later than three (3) weeks after Due
`
`
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`5
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`IPR2019-00880
`Patent 7,490,749 B2
`
`Date 3. The reply may only respond to the preliminary guidance. Patent
`Owner may file a sur-reply in response to Petitioner’s reply to the Board’s
`preliminary guidance. The sur-reply may only respond to arguments made
`in the reply and must be filed no later than three (3) weeks after the
`Petitioner’s reply. No new evidence may accompany the reply or the sur-
`reply in this situation.
`7.
`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 Due Date Appendix.
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria. 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
`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 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 proceeding. The parties may stipulate to different dates for DUE
`DATES 1 through 3, 5, and 6 (earlier or later, but no later than DUE
`DATE 7). In stipulating to move any due dates in the scheduling order, the
`parties must be cognizant that the Board requires four weeks after the filing
`of an opposition to the motion to amend (or the due date for the opposition,
`
`
`
`6
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`IPR2019-00880
`Patent 7,490,749 B2
`
`if none is filed) for the Board to issue its preliminary guidance, if requested
`by Patent Owner. 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 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.
`b. A motion to amend the patent (37 C.F.R. § 42.121).
`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 also file either:
`a. a reply to the opposition to the motion to amend and preliminary
`board guidance (if provided); or
`b. a revised motion to amend.
`
`
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`7
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`IPR2019-00880
`Patent 7,490,749 B2
`
`
`4. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`5. DUE DATE 5
`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)).
`6. 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.
`7. DUE DATE 7
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`8. 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.
`
`
`
`
`8
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`
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`IPR2019-00880
`Patent 7,490,749 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 .................................................................... December 27, 2019
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 .......................................................................... March 20, 2020
`Petitioner’s reply to Patent Owner’s response to the petition
`Petitioner’s opposition to Patent Owner’s motion to amend
`
`DUE DATE 3 ............................................................................... May 1, 2020
`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 OR Patent Owner’s revised motion to amend
`
`
`DUE DATE 4 ............................................................................. May 22, 2020
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ............................................................................. June 12, 2020
`Petitioner’s sur-reply to the opposition to the motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 ............................................................................. June 19, 2020
`Opposition to motion to exclude
`Request for pre-hearing conference
`
`DUE DATE 7 ............................................................................. June 26, 2020
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ................................................................................ July 9, 2020
`Oral argument (if requested)
`
`
`
`
`
`
`9
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`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`PETITIONER:
`
`Steven R. Katz
`Joshua A. Griswold
`Kenneth W. Darby, Jr.
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`katz@fr.com
`griswold@fr.com
`kdarbyfr.com
`phillips@fr.com
`
`
`PATENT OWNER:
`
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christoper M. Pepe
`WEIL, GOTSCHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
`
`
`
`
`
`10
`
`
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