Trials@uspto.gov
`571.272.7822
`
`
` Paper 16
`Date: December 6, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALCON INC., ALCON LENSX, INC., ALCON VISION, LLC, ALCON
`LABORATORIES, INC., and ALCON RESEARCH, LLC,
`Petitioner,
`
`v.
`
`AMO DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`IPR2021-00849
`Patent 10,709,548 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`571.272.7822
`
`
` Paper 16
`Date: December 6, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALCON INC., ALCON LENSX, INC., ALCON VISION, LLC, ALCON
`LABORATORIES, INC., and ALCON RESEARCH, LLC,
`Petitioner,
`
`v.
`
`AMO DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`IPR2021-00849
`Patent 10,709,548 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`
`IPR2021-00849
`Patent 10,709,548 B2
`
`
`I. 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 Consolidated Patent Trial Practice Guide
`(Nov. 2019) (“Practice Guide”) (guidance in preparing for the initial
`conference call).1 A request for an initial conference call shall include a list
`of proposed motions, if any, to be discussed during the call.
`The parties may request additional conference calls as needed. Any
`email requesting a conference call with the Board should: (a) copy all
`parties, (b) indicate generally the relief being requested or the subject matter
`of the conference call, (c) include multiple times when all parties are
`available, (d) state whether the opposing party opposes any relief requested,
`and (e) if opposed, either certify that the parties have met and conferred
`telephonically or in person to attempt to reach agreement, or explain why
`such meet and confer did not occur. The email may not contain substantive
`argument and, unless otherwise authorized, may not include attachments.
`See Consolidated Practice Guide at 9–10.
`2.
`Protective Order
`No protective order shall apply to this proceeding unless the Board
`enters one (upon motion by the parties). 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
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2021-00849
`Patent 10,709,548 B2
`
`adopt the Board’s default protective order if they conclude that a protective
`order is necessary. See Practice Guide, App’x B (Default Protective Order).
`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
`in maintaining a complete and understandable file history. See Practice
`Guide.
`Discovery Disputes
`3.
`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
`
`3
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`IPR2021-00849
`Patent 10,709,548 B2
`
`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
`and 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).
`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”); see also
`Consolidated Practice Guide at 67. 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.
`
`4
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`IPR2021-00849
`Patent 10,709,548 B2
`
`
`Any motion to amend and briefing related to such a motion shall
`generally follow the practices and procedures described in MTA Pilot
`Program Notice unless otherwise ordered by the Board in this proceeding.
`The parties are further directed to Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential), and Rules
`of Practice To Allocate the Burden of Persuasion on Motions To Amend in
`Trial Proceedings Before the Patent Trial and Appeal Board,
`85 Fed. Reg. 82923 (Dec. 21, 2020).
`At DUE DATE 3, Patent Owner has the option to file a reply to the
`opposition to the motion to amend and preliminary guidance, or a revised
`motion to amend. See MTA Pilot Program Notice at 9500–01. Patent
`Owner may elect to file a revised motion to amend even if Patent Owner did
`not request to receive preliminary guidance on its motion to amend. 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 at 9501, App. 1B.
`As also discussed in the MTA Pilot Program Notice, if the Board
`issues preliminary guidance on the motion to amend, and Patent Owner files
`neither a reply to the opposition to the motion to amend nor 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
`
`5
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`IPR2021-00849
`Patent 10,709,548 B2
`
`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. See
`MTA Pilot Program Notice at 9502. 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 remotely via video or telephonically, but if possible
`at the USPTO headquarters in Alexandria, Virginia.
`If the final hearing is held in person, seating in the Board’s hearing
`rooms is 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.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`their skills and to aid in succession planning for the next generation. The
`Board defines a LEAP practitioner as a patent agent or attorney having
`three (3) or fewer substantive oral arguments in any federal tribunal,
`including PTAB. Parties are encouraged to participate in the Board’s LEAP
`
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`IPR2021-00849
`Patent 10,709,548 B2
`
`program.2 The Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.3
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent. The Board discerns
`that it is often LEAP practitioners who have the best understanding of the
`facts of the case and the evidence of record, and the Board encourages their
`participation.
`
`II. 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, 5, and 6, as well as the portion of DUE DATE 2 related to
`Petitioner’s reply (earlier or later, but no later than DUE DATE 3 for Patent
`Owner’s sur-reply) and the portion of DUE DATE 3 related to Patent
`Owner’s sur-reply (earlier or later, but no later than DUE DATE 7). The
`parties may not stipulate to a different date for the portion of DUE DATE 2
`related to Petitioner’s opposition to a motion to amend, or for the portion of
`DUE DATE 3 related to Patent Owner’s reply to an opposition to a motion
`
`2 Information about the LEAP program can be found at www.uspto.gov/leap.
`3 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available at www.uspto.gov/leap.
`
`7
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`IPR2021-00849
`Patent 10,709,548 B2
`
`to amend (or Patent Owner’s revised motion to amend) without prior
`authorization from the Board. 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 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 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.
`
`8
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`
`
`IPR2021-00849
`Patent 10,709,548 B2
`
`
`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.
`NOTE: If Patent Owner files neither of the above papers (a reply to the
`opposition or a revised motion to amend), and the Board has issued
`preliminary guidance, Petitioner may file a reply to the preliminary
`guidance, no later than three (3) weeks after DUE DATE 3. Patent Owner
`may file a sur-reply to Petitioner’s reply to the preliminary guidance no later
`than three (3) weeks after Petitioner’s reply.
`4. DUE DATE 4
`Either party may file a request for oral argument (not extendable 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 (not extendable by stipulation).
`8. DUE DATE 8
`The oral argument (if requested by either party) shall be held on this
`date (not extendable by stipulation). Approximately one month prior to the
`
`9
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`IPR2021-00849
`Patent 10,709,548 B2
`
`argument, the Board will issue an order setting the start time of the hearing
`and the procedures that will govern the parties’ arguments.
`
`10
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`
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`IPR2021-00849
`Patent 10,709,548 B2
`
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ...................................................................... February 21, 2022
`Patent Owner’s response to the petition;
`Patent Owner’s motion to amend the patent
`DUE DATE 2 ............................................................................. May 16, 2022
`Petitioner’s reply to Patent Owner’s response to petition;
`Petitioner’s opposition to motion to amend
`DUE DATE 3 ............................................................................. June 28, 2022
`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)4
`DUE DATE 4 .............................................................................. July 19, 2022
`Request for oral argument (not extendable by stipulation)
`DUE DATE 5 ........................................................................... August 2, 2022
`Petitioner’s sur-reply to reply to opposition to motion to amend;
`Motion to exclude evidence
`DUE DATE 6 ........................................................................... August 9, 2022
`Opposition to motion to exclude;
`Request for prehearing conference
`DUE DATE 7 ......................................................................... August 11, 2022
`Reply to opposition to motion to exclude (not extendable by
`stipulation)
`DUE DATE 8 ......................................................................... August 12, 2022
`Oral argument (if requested; not extendable by stipulation)
`
`
`
`4 If Patent Owner files neither a reply to Petitioner’s opposition to the MTA
`nor a revised MTA, the parties are directed to Section II.3 above.
`
`11
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`
`
`IPR2021-00849
`Patent 10,709,548 B2
`
`
`For PETITIONER:
`
`Gregg F. LoCascio
`W. Todd Baker
`Noah Frank
`KIRKLAND & ELLIS LLP
`gregg.locascio@kirkland.com
`todd.baker@kirkland.com
`noah.frank@kirkland.com
`Alcon_IPR@kirkland.com
`
`For PATENT OWNER:
`
`Michael A. Morin
`Jonathan M. Strang
`S. Giri Pathmanaban
`Roger J. Chin
`Susan Y. Tull
`LATHAM & WATKINS LLP
`michael.morin@lw.com
`jonathan.strang@lw.com
`giri.pathmanaban@lw.com
`roger.chin@lw.com
`susan.tull@lw.com
`
`
`12
`
`
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