`571-272-7822
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`Paper 15
`Date: May 18, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SLAYBACK PHARMA LLC,
`Petitioner,
`v.
`EYE THERAPIES, LLC,
`Patent Owner.
`
` IPR2022-00142, Patent 8,293,742 B21
`IPR2022-00146, Patent 9,259,425 B2
`
`Before JOHN G. NEW, TINA E. HULSE, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`PER CURIAM.
`
`JOINT SCHEDULING ORDER
`
`
`
`
`
`
`
`1 This Order applies to both cases. We exercise our discretion to issue one
`Order to be docketed in each case. The parties may not use this caption for
`any subsequent papers without prior Board authorization.
`
`
`
`
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
`A. BACKGROUND
`We have instituted inter partes review in IPR2022-00142 and
`IPR2022-00146. Because there is significant overlap of issues and prior art
`between these instituted proceedings, and to facilitate the handling of these
`proceedings in an efficient manner, we issue the following Joint Scheduling
`Order for the above-identified proceedings.
`
`
`B. GENERAL INSTRUCTIONS
`
`Initial and Additional Conference Calls
`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 Patent Trial and Appeal Board Consolidated Trial
`Practice Guide (November 2019)2 (“Consolidated Practice Guide”) 9–10, 65
`(guidance in preparing for a conference call); see also 84 Fed. Reg. 64,280
`(Nov. 21, 2019). 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
`
`
`2 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
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`2
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`
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
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`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 9–10.
`
`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. It is the responsibility of the party whose confidential information is
`at issue, not necessarily the proffering party, to file the motion to seal. The
`Board encourages the parties to adopt the Board’s default protective order if
`they conclude that a protective order is necessary. See Consolidated Practice
`Guide 107–122 (App. B, Protective Order Guidelines and 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
`
`3
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`
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
`in maintaining a complete and understandable file history. See Consolidated
`Practice Guide 21–22.
`
`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.
`
`Testimony
`4.
`The parties are reminded that the Testimony Guidelines appended to
`the Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines)
`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.
`
`Cross-Examination
`5.
`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).
`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.
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`4
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`
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
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`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. § 42.221(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 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.
`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 9500–01. Patent Owner
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`5
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
`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 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
`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 9502. No new evidence may accompany the
`reply or the sur-reply in this situation.
`
`Oral Argument
`7.
`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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`6
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 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. The
`parties may request that the oral argument instead be held at any USPTO
`Regional Office. The parties should meet and confer, and jointly propose
`the parties’ preference 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.
`
`Legal Experience and Advancement Program
`8.
`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
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
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`PTAB, and seven (7) or fewer years of experience as a licensed attorney or
`agent.
`Parties are encouraged to participate in the Board’s LEAP program.
`Either party may request that a LEAP practitioner participate in the program
`and conduct at least a portion of the party’s oral argument. In exchange, the
`Board will grant up to fifteen 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 hearing, by email to the Board at
`PTABHearings@uspto.gov.
`A LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner. Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements, either due to the years of experience as a licensed
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`but nonetheless has a basis for considering themselves to be in the category
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`8
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
`of advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided in such circumstances, as with LEAP, a
`party may request to share time with counsel and the Board will permit more
`experienced counsel to provide some assistance, if necessary, during oral
`argument, and to clarify any statements on the record before the conclusion
`of the oral argument.
`As always, 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.
`
`C. 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
`to amend (or Patent Owner’s revised motion to amend) without prior
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`9
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
`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).
`
`
`DUE DATE 2
`2.
`Petitioner may file a reply to the Patent Owner’s response.
`Petitioner may file an opposition to the motion to amend.
`
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
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`DUE DATE 3
`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/or
`preliminary 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.
`
`
`DUE DATE 4
`4.
`Either party may file a request for oral argument (may not be extended
`by stipulation).
`
`
`DUE DATE 5
`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)).
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`11
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
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`DUE DATE 6
`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
`7.
`Either party may file a reply to an opposition to a motion to exclude
`evidence.
`
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`DUE DATE 8
`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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`12
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
`
`I.
`DUE DATE APPENDIX3
`DUE DATE 1 ........................................................................ August 10, 2022
`Patent Owner’s motion to amend the patent
`Patent Owner’s response to the petition
`DUE DATE 2 ..................................................................... November 2, 2022
`
`
`Petitioner’s opposition to Patent Owner’s
`motion to amend
`
`Petitioner’s reply to Patent Owner’s response
`to the petition
`
`DUE DATE 3 .................................................................... December 14, 2022
`Patent Owner’s reply to Petitioner’s opposition to the motion to
`amend OR Patent Owner’s revised motion to amend4
`
`
`Patent Owner’s sur-reply to Petitioner’s reply to the response to the
`petition
`
`
`DUE DATE 4 .......................................................................... January 4, 2023
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 ........................................................................ January 25, 2023
`Petitioner’s sur-reply to the opposition to the motion to amend
`Motion to exclude evidence
`
`
`3 These proceedings will proceed on the same schedule. The panel
`anticipates a joint oral hearing (if requested) for the related proceedings.
`
` If Patent Owner files neither a reply to Petitioner’s opposition to the MTA
`nor a revised MTA, the parties are directed to Section C(3) above.
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
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`DUE DATE 6 ........................................................................ February 1, 2023
`Opposition to motion to exclude
`Request for pre-hearing conference
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`DUE DATE 7 ........................................................................ February 8, 2023
`Reply to opposition to motion to exclude
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`DUE DATE 8 ...................................................................... February 15, 2023
`Oral argument (if requested)
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`14
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`IPR2022-00142, Patent 8,293,742 B2
`IPR2022-00146, Patent 9,259,425 B2
`
`FOR PETITIONER:
`Louis Weinstein
`Patrick Pollard
`WINDELS MARX LANE & MITTENDORF, LLP
`lweinstein@windelsmarx.com
`ppollard@windelsmarx.com
`
`
`FOR PATENT OWNER:
`
`Bryan Diner
`Justin Hasford
`Caitlin O’Connell
`Christina Ji-Hye Yang
`FINNEGAN HENDERSON FARRABOW GARRETT & DUNNER LLP
`Bryan.diner@finnegan.com
`Justin.hasford@finnegan.com
`Caitlin.oconnell@finnegan.com
`Christina.yang@finnegan.com
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`15
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