Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 35
`Entered: June 23, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PFENEX INC.,
`Petitioner,
`v.
`GLAXOSMITHKLINE BIOLOGICALS SA,
`Patent Owner.
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`
`SMITH, Administrative Patent Judge.
`
`
`
`REVISED SCHEDULING ORDER
`
`
`Tel: 571-272-7822
`
`Paper 35
`Entered: June 23, 2020
`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PFENEX INC.,
`Petitioner,
`v.
`GLAXOSMITHKLINE BIOLOGICALS SA,
`Patent Owner.
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`
`SMITH, Administrative Patent Judge.
`
`
`
`REVISED SCHEDULING ORDER
`
`
`
`
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`A. REVISED MOTION TO AMEND
`1.
`Introduction
`On June 17, 2020, Patent Owner filed a revised motion to amend
`(“revised MTA”) in accordance with our Scheduling Order (Paper 13) and
`the March 15, 2019, Federal Register notice regarding a new pilot program
`relating to motion to amend practice at the Office. 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 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot”). In
`accordance with the MTA Pilot, we revise our original Scheduling Order
`(Paper 13), dated November 13, 2019, to set subsequent due dates based on
`the date Patent Owner filed its 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.
`Furthermore, 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
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`2
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`IPR2019-01028
`Patent 9,422,345 B2
`
`responds to issues raised in the preliminary guidance (if provided) or in the
`corresponding revised MTA or opposition. Petitioner’s sur-reply may not 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 a 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 receiving 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.
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`3
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`IPR2019-01028
`Patent 9,422,345 B2
`
`
`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
`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 C.F.R. 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).
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`IPR2019-01028
`Patent 9,422,345 B2
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`2. DUE DATE 4
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`3. DUE DATE RMTA2
`Patent Owner may file a reply to Petitioner’s opposition to the revised
`MTA. Patent Owner’s reply 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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`IPR2019-01028
`Patent 9,422,345 B2
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`REVISED DUE DATE APPENDIX
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`
`
`DUE DATE RMTA1 ................................................................. July 22, 2020
`Petitioner’s opposition to Patent Owner’s revised motion to amend
`
`DUE DATE 4 .............................................................................. July 29, 2020
`Request for oral argument (may not be extended by stipulation)
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`DUE DATE RMTA2 ............................................................ August 12, 2020
`Patent Owner’s reply to opposition to revised motion to amend
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`DUE DATE 5 ........................................................................ August 19, 2020
`Motion to exclude evidence
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`DUE DATE 6 ........................................................................ August 26, 2020
`Opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 .................................................................... September 2, 2020
`Reply to opposition to motion to exclude
`Petitioner’s sur-reply to reply to opposition to revised motion to
`amend
`DUE DATE 8 .................................................................... September 9, 2020
`Oral argument (if requested)
`
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`6
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`IPR2019-01028
`Patent 9,422,345 B2
`
`FOR PETITIONER:
`Jeffrey Guise
`Lora Green
`Wendy Devine
`Lorelei Westin
`WILSON SONSINI GOODRICH & ROSATI
`jguise@wsgr.com
`lgreen@wsgr.com
`wdevine@wsgr.com
`lwestin@wsgr.com
`
`
`FOR PATENT OWNER:
`Charles Lipsey
`Rich Racine
`Joann Neth
`Amanda Murphy
`Trenton Ward
`Yieyie Yang
`FINNNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Charles.lipsey@finnegan.com
`Rich.racine@finnegan.com
`Joan.neth@finnegan.com
`Amanda.murphy@finnegan.com
`Trenton.ward@finnegan.com
`yieyieyang@finnegan.com
`
`7
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