Trials@uspto.gov
`571.272.7822
`
`
` Paper 13
`
` Entered: November 13, 2019
`
`
`
`
`
`
`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 No. 9,422,345 B2
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`571.272.7822
`
`
` Paper 13
`
` Entered: November 13, 2019
`
`
`
`
`
`
`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 No. 9,422,345 B2
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`
`
`
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`
`
`
`
`A. GENERAL INSTRUCTIONS
`Initial Conference Call
`1.
`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.
`Protective Order
`2.
`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 Update (July 2019), at 6, Appendix B, 84
`Fed. Reg. 33,925 (July 16, 2019) (“Update July 2019”), available at
`https://www.uspto.gov/TrialPracticeGuide3. 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
`The Board has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in this proceeding should be
`
`2
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`IPR2019-01028
`Patent 9,422,345 B2
`
`
`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 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 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).
`
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`IPR2019-01028
`Patent 9,422,345 B2
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`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). To satisfy this
`requirement, Patent Owner should request a conference call with the Board
`no later than two weeks prior to DUE DATE 1. 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
`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); see also Update July 2019, at 32–40.
`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)
`
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`IPR2019-01028
`Patent 9,422,345 B2
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`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 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
`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 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.
`
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`IPR2019-01028
`Patent 9,422,345 B2
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`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria, Virginia.
`The parties should meet and confer, and jointly propose the parties’
`alternative preference for the hearing location at the initial conference call, if
`requested. Alternatively, the parties may jointly file a paper stating their
`preference for the hearing location within one month of this Order. Note
`that the Board may not be able to honor the parties’ preference of hearing
`location due to, among other things, the availability of hearing room
`resources and the needs of the panel. The Board will consider the location
`request and notify the parties accordingly if a request for change in location
`is granted.
`
`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 proceeding. The parties may stipulate 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,
`if none is filed) for the Board to issue its preliminary guidance, if requested
`
`6
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`IPR2019-01028
`Patent 9,422,345 B2
`
`
`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 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.
`
`7
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`IPR2019-01028
`Patent 9,422,345 B2
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`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.
` 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.
`
`
`
`7.
`
`8
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`IPR2019-01028
`Patent 9,422,345 B2
`
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ....................................................................... February 5, 2020
`Patent Owner’s response to the petition
`Patent Owner’s motion to amend the patent
`
`
`
`DUE DATE 2 ................................................................. April 29, 2020
`
`Petitioner’s reply to Patent Owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................... June 10, 2020
`
`Patent Owner’s sur-reply to reply
`Patent Owner’s reply to opposition to motion to amend
`(or Patent Owner’s revised motion to amend)
`
`DUE DATE 4 ................................................................... July 1, 2020
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 .................................................................... July 22, 2020
`
`Petitioner’s sur-reply to reply to opposition to motion to amend
`Motion to exclude evidence
`
`DUE DATE 6 ................................................................... July 29, 2020
`
`Opposition to motion to exclude
`Request for prehearing conference
`
`DUE DATE 7 ................................................................... August 5, 2020
`
`Reply to opposition to motion to exclude
`
`DUE DATE 8 ..................................................................... August 12, 2020
`
`Oral argument (if requested)
`
`9
`
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`
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`For PETITIONER:
`
`Jeffrey W. Guise
`Lorelei Westin
`Lora M. Green
`Wendy Devine
`WILSON SONSINI GOODRICH & ROSATI
`jguise@wsgr.com
`lwestin@wsgr.com
`lgreen@wsgr.com
`wdevine@wsgr.com
`
`
`For PATENT OWNER:
`
`Charles E. Lipsey
`Rich B. Racine
`Joann M. Neth
`Amanda Murphy
`Trenton A. Ward
`Yieyie Yang
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`charles.lipsey@finnegan.com
`rich.racine@finnegan.com
`joann.neth@finnegan.com
`amanda.murphy@finnegan.com
`trenton.ward@finnegan.com
`yieyie.yang@finnegan.com
`
`
`10
`
`
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