Trials@uspto.gov
`Paper 14
`Tel: 571-272-7822
`Entered: September 2, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARKEMA INC. and ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`____________
`
`Case PGR2016-00011
`Case PGR2016-000121
`Patent 9,157,017 B2
`
`____________
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`1 This Order addresses issues common to both cases; therefore, we issue
`a single order to be entered in each case. The parties are not authorized to
`use this style heading for any subsequent papers.
`
`
`Paper 14
`Tel: 571-272-7822
`Entered: September 2, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARKEMA INC. and ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`____________
`
`Case PGR2016-00011
`Case PGR2016-000121
`Patent 9,157,017 B2
`
`____________
`
`
`Before MICHAEL P. TIERNEY, GRACE KARAFFA OBERMANN, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`
`
`
`SCHEDULING ORDER
`
`
`
`1 This Order addresses issues common to both cases; therefore, we issue
`a single order to be entered in each case. The parties are not authorized to
`use this style heading for any subsequent papers.
`
`
`
`PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`I. 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 5 (earlier or later, but no later than DUE DATE 6). A
`notice of the stipulation, specifically identifying the changed due dates, must
`be promptly filed. The parties may not stipulate to an extension of DUE
`DATES 6 and 7.
`In stipulating to 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 (37 C.F.R. § 42.64(b)(2)), to conduct cross-
`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
`evidence and cross-examination testimony (see section B, below).
`The parties are reminded that the Testimony Guidelines appended to
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772
`(Aug. 14, 2012) (Appendix D), apply to this proceeding. The Board may
`impose an appropriate sanction for failure to adhere to the Testimony
`Guidelines. See 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.
`
`A. INITIAL CONFERENCE CALL
` The parties are directed to contact the Board via e-mail at
`Trials@uspto.gov at least three business days before the date set for the
`initial conference call if there is no need to discuss proposed changes to this
`Scheduling Order or proposed motions with the Board. If no such
`discussion is needed, the initial conference call will be cancelled. The
`
`2
`
`
`
`PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`parties are directed to the Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,765–66 (Aug. 14, 2012), for guidance in preparing for the initial
`conference call, and should be prepared to discuss any proposed changes to
`this Scheduling Order (i.e., changes to DUE DATES 6 and/or 7), and any
`motions the parties anticipate filing during the trial that are not authorized
`already by our Rules or by this Scheduling Order.
`
`B. DUE DATE 1
`The patent owner may file—
`a.
`A response to the petition (37 C.F.R. § 42.120), and
`b.
`A motion to amend the patent (37 C.F.R. § 42.121).
`The patent owner must file any such response or motion to amend by
`DUE DATE 1. The patent owner is reminded that it must confer with the
`Board before filing a motion to amend. 37 C.F.R. § 42.121(a). The patent
`owner should contact the Board to request any such conference in sufficient
`time to ensure that the conference is conducted at least one week before
`DUE DATE 1. If the patent owner elects not to file either a response to the
`petition or a motion to amend, the patent owner must arrange a conference
`call with the parties and the Board. The patent owner is cautioned that any
`arguments for patentability not raised in the response, or any evidence not
`referred to, are deemed waived.
`
`C. DUE DATE 2
`The petitioner must file any reply to the patent owner’s response and
`opposition to the motion to amend by DUE DATE 2.
`
`3
`
`
`
`PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`
`D. DUE DATE 3
`The patent owner must file any reply to the petitioner’s opposition to
`patent owner’s motion to amend by DUE DATE 3.
`
`E. DUE DATE 4
`1.
`Each party must file any motion for an observation on the
`cross-examination testimony of a reply witness (see section III, below) by
`DUE DATE 4.
`2.
`Each party must file any motion to exclude evidence (37 C.F.R
`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
`DUE DATE 4.
`
`F. DUE DATE 5
`1.
`Each party must file any reply to an observation on cross-
`examination testimony by DUE DATE 5.
`2.
`Each party must file any opposition to a motion to exclude
`evidence by DUE DATE 5.
`
`G. DUE DATE 6
`Each party must file any reply for a motion to exclude evidence by
`DUE DATE 6.
`
`H. DUE DATE 7
`The oral argument (if requested by either party) is set for DUE
`DATE 7.
`
`II. CROSS-EXAMINATION
`Except as the parties might otherwise agree, for each due date—
`
`4
`
`
`
`PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`
`Cross-examination begins after any supplemental evidence is
`1.
`due. See 37 C.F.R. § 42.53(d)(2).
`2.
`Cross-examination ends no later than a week before the filing
`date for any paper in which the cross-examination testimony is expected to
`be used. See id.
`
`III. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`A motion for observation on cross-examination provides the parties
`with a mechanism to draw the Board’s attention to relevant cross-
`examination testimony of a reply witness because no further substantive
`paper is permitted after the reply. See Office Patent Trial Practice Guide, 77
`Fed. Reg. at 48,768. The observation must be a concise statement of the
`relevance of precisely identified testimony to a precisely identified argument
`or portion of an exhibit. Each observation should not exceed a single, short
`paragraph. The opposing party may respond to the observation. Any
`response must be equally concise and specific.
`
`
`
`
`
`5
`
`
`
`PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ............. 2:00 PM ET on October 3, 2016
`
`DUE DATE 1 .................................................................. November 23, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ..................................................................... February 13, 2017
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... March 13, 2017
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ............................................................................. April 3, 2017
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 ........................................................................... April 17, 2017
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ........................................................................... April 24, 2017
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ............................................................................ May 15, 2017
`Oral argument (if requested)
`
`
`
`
`
`6
`
`
`
`PGR2016-00011, PGR2016-00012
`Patent 9,157,017 B2
`
`PETITIONER:
`
`Mark D. Sweet
`Mark J. Feldstein
`Erin M. Sommers
`Charles W. Mitchell
`mark.sweet@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`charles.mitchell@finnegan.com
`Arkema_PTAB@finnegan.com
`
`PATENT OWNER:
`
`Gregg F. LoCascio
`Eugene Goryunov
`Noah Frank
`glocascio@kirkland.com
`egoryunov@kirkland.com
`noah.frank@kirkland.com
`HON_PTAB_Service@kirkland.com
`
`
`7
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