Trials@uspto.gov
`571-272-7822
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` Paper 21
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` Entered: 22 March 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`COALITION FOR AFFORDABLE DRUGS V LLC;
`HAYMAN CREDES MASTER FUND, L.P.;
`HAYMAN ORANGE FUND SPC – PORTFOLIO A;
`HAYMAN CAPITAL MASTER FUND, L.P.;
`HAYMAN CAPITAL MANAGEMENT, L.P.;
`HAYMAN OFFSHORE MANAGEMENT, INC.;
`HAYMAN INVESTMENTS, LLC;
`NXN PARTNERS, LLC;
`IP NAVIGATION GROUP, LLC;
`J KYLE BASS, and ERICH SPANGENBERG,
`Petitioners,
`v.
`BIOGEN MA INC.,
`Patent Owner.
`__________
`
`Case IPR2015-01993
`Patent 8,399,514 B2
`__________
`
`
`Before FRED E. McKELVEY, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(c)
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`571-272-7822
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` Paper 21
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` Entered: 22 March 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`COALITION FOR AFFORDABLE DRUGS V LLC;
`HAYMAN CREDES MASTER FUND, L.P.;
`HAYMAN ORANGE FUND SPC – PORTFOLIO A;
`HAYMAN CAPITAL MASTER FUND, L.P.;
`HAYMAN CAPITAL MANAGEMENT, L.P.;
`HAYMAN OFFSHORE MANAGEMENT, INC.;
`HAYMAN INVESTMENTS, LLC;
`NXN PARTNERS, LLC;
`IP NAVIGATION GROUP, LLC;
`J KYLE BASS, and ERICH SPANGENBERG,
`Petitioners,
`v.
`BIOGEN MA INC.,
`Patent Owner.
`__________
`
`Case IPR2015-01993
`Patent 8,399,514 B2
`__________
`
`
`Before FRED E. McKELVEY, Administrative Patent Judge.
`
`
`SCHEDULING ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5(c)
`
`
`
`
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`IPR2015-01993
`Patent 8,399,514 B2
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`I. Due Dates
`
`This Scheduling Order sets due dates for taking action in the above-
`identified inter partes review trial. 37 C.F.R. § 42.5(c).
`The parties may stipulate to different dates for DUE DATES 1
`through 5 (earlier or later, but not later than DUE DATE 6).
`A notice of any stipulation, specifically identifying any changed due
`dates, must be promptly filed.
`The parties may not stipulate to an extension of DUE DATES 6 and 7.
`In stipulating to difference dates, the parties should consider the effect
`of the stipulation on the following times to:
`(1) objection to admissibility of evidence (37 C.F.R.
`§ 42.64(b)(1));
`serving supplemental evidence (37 C.F.R. § 42.64(b)(2));
`(2)
`conducting cross-examination (37 C.F.R. § 42.53(d)(2));
`(3)
`and
`
`(4) drafting papers depending on the evidence and cross-
`examination testimony (see Part V, below).
`The Testimony Guidelines appended to the Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48772 (Aug. 14, 2012) (Appendix D)
`apply to trials.
`The parties should adhere strictly to the Testimony Guidelines.
`37 C.F.R. § 42.12.
`Unless agreed to by the parties, any redirect examination shall
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`IPR2015-01993
`Patent 8,399,514 B2
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`proceed, without a recess, immediately after conclusion of cross-
`examination; “coaching” of a witness is not permitted. By proceeding
`directly to redirect after cross-examination will eliminate any possibility of
`coaching during a break between redirect and conclusion of cross-
`examination.
`
`The following comments by defending counsel generally are viewed
`as suggesting an answer to (i.e., coaching,) a witness:
`(a) Objection, vague—not permitted.
`(b) Objection to the form of the question—not permitted.
`(c) Take your time in answering the question.
`(d) Look at the document before you answer.
`(e) Counsel, do you want to show the witness the document?
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`
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`The following observation by Judge Gawthrop, in Hall v. Clifton Precision,
`150 F.R.D. 525, 530 n.1 (E.D. Pa. 1993), is highly relevant:
`I also note that a favorite objection or interjection of lawyers is,
`"I don't understand the question; therefore the witness doesn't
`understand the question." This is not a proper objection. If the
`witness needs clarification, the witness may ask the deposing
`lawyer for clarification. A lawyer's purported lack of
`understanding is not a proper reason to interrupt a deposition.
`In addition, counsel are not permitted to state on the record their
`interpretations of questions, since those interpretations are
`irrelevant and often suggestive of a particularly desired answer.
`
`
`
`II. Initial Conference Call
`A. Guidance
`The Trial Practice Guide, 77 Fed. Reg. at 48765–66 (see E. Initial
`Conference Call (One Month After Instituting Trial)), sets out guidance in
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`IPR2015-01993
`Patent 8,399,514 B2
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`preparing for the initial conference call.
`The parties should be prepared to discuss any proposed changes to
`this Scheduling Order and any motions the parties anticipate filing during
`the trial.
`No later than 15 April 2016, the parties shall file a list of
`proposed motions. 37 C.F.R. § 42.21(a); Trial Practice Guide, 77 Fed. Reg.
`at 48765 (col. 3).
`
`B. Specific Matters
`1.
`The parties should be prepared to advise the Board whether the parties
`contemplate use of alternative dispute resolution procedures.
`2.
`Patent Owner should be prepared to advise the Board whether it
`intends to file a Motion to Amend.
`
`3.
`Patent Owner should be prepared to advise the Board if it intends to
`reply on unexpected results or “secondary considerations” in opposing any
`ground involving § 103(a) and the general nature of any proofs.
`4.
`Petitioner should be prepared to advise the Board if it intends to file
`any additional Petition to challenge patentability of any claim of the ʼ210
`patent.
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`IPR2015-01993
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`5.
`Patent Owner should be prepared to advise the Board whether it
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`intends to rely on the filing date of its Provisional Application 60/888,921,
`filed 8 February 2007.
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`6.
`Patent Owner should be prepared to advise the Board whether it
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`intends to antedate any prior art relied upon by Petitioner where the prior art
`is not prior art under § 102(b), and if so, the nature of antedating proofs
`intended to be relied upon.
`
`C. Other matters
`1.
`The parties are advised that when a document with a large number of
`pages, (e.g., a file wrapper) is offered in evidence, generally the only pages
`of the document that will be considered by the Board are the specific pages
`mentioned in a motion, opposition, or reply.
`Pages of the large document not mentioned in a motion, opposition, or
`reply, or otherwise discussed in a written order by the Board, will not be
`considered as having been admitted into evidence.
`2.
`The style of any paper filed in the future shall not exceed one line.
`See also Paper 16, page 2, n.2.
`
`3.
`Any evidence served in response to an objection to admissibility of
`evidence shall be filed with the Board upon being served.
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`IPR2015-01993
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`IV. Due Dates
`A. DUE DATE 1
`On or before DUE DATE 1, Patent Owner may file:
`(1)
`an Opposition to the Petition (37 C.F.R. § 42.120(a)), and
`(2)
`a Motion to Amend in connection with an involved
`unexpired patent (37 C.F.R. § 42.121(a)).
`If the Patent Owner elects not to file an Opposition or a Motion to
`Amend, the Patent Owner must arrange for a conference call with the parties
`and the Board.
`Patent Owner is cautioned that any argument that could have been
`made in support of patentability that is not raised in the Opposition will be
`deemed waived.
`
`B. DUE DATE 2
`On or before DUE DATE 2, Petitioner may file
`(1)
`a Reply to any Patent Owner Opposition and
`(2)
`an Opposition to any Patent Owner Motion to Amend.
`C. DUE DATE 3
`On or before DUE DATE 3, Patent Owner may file a Reply to any
`Opposition to any Patent Owner Motion to Amend.
`D. DUE DATE 4
`On or before DUE DATE 4, each party may file:
`(1) Observation on the cross-examination testimony of a
`reply witness (see Section VI, below);
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`IPR2015-01993
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`(2)
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`a Motion to Exclude Evidence (37 C.F.R. § 42.64(c));
`and
`a Request for Oral Argument (37 C.F.R. § 42.70(a)).
`(3)
`A motion to exclude shall be limited only to an issue of admissibility
`under the rules (37 C.F.R. § 42.61(a)) or the Federal Rules of Evidence
`(37 C.F.R. § 42.62).
`Assuming evidence is not excluded, the weight to be given evidence
`should be addressed only in the Patent Owner’s Opposition and the
`Petitioner’s Reply.
`A Motion to Exclude is not a means for further addressing the merits.
`Motions to Exclude not strictly limited to admissibility may be expunged.
`E. DUE DATE 5
`On or before DUE DATE 5, each party may file:
`(1)
`a Response to an Observation on cross-examination
`testimony; and
`an Opposition to a Motion to Exclude Evidence.
`F. DUE DATE 6
`On or before DUE DATE 6, a party may file a reply to an opposition
`to a motion to exclude evidence.
`G. DUE DATE 7
`Oral argument, if requested by either party, is set for DUE DATE 7.
`V. Cross-Examination
`Except as agreed to by the parties, for each due date:
`(1)
`cross-examination begins (a) if an objection to
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`(2)
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`admissibility of evidence was made, after any
`supplemental evidence (37 C.F.R. § 42.64(b)(2)) is filed
`and served (37 C.F.R. § 42.53(d)(2)) or (b) if no
`objection to admissibility of evidence is made, when the
`time expires for making objections; and
`cross-examination ends no later than one week before the
`filing date for any paper in which cross-examination
`testimony is expected to be used (id.).
`VI. Observation on Reply Cross-Examination
`An Observation on reply cross-examination (an Observation is not a
`motion) 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 Petitioner’s Reply. See Trial
`Practice Guide, 77 Fed. Reg. at 48768.
`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.
`An opposing party may file a Response to the Observation. See DUE
`DATE 5(1).
`Any response must be equally concise and specific.
`VII. Motion to Amend
`Notwithstanding the page limits set forth in 37 C.F.R. § 42.24 for
`motions (§ 42.24(a)(1)(v)), oppositions (§ 42.24(b)(3)), and replies
`
`(2)
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`IPR2015-01993
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`(§ 42.24(c)(2)), the parties are authorized the following page limits:
`(1) Motion to Amend—up to twenty-five (25) pages;
`(2)
`In addition to the twenty-five (25) pages, a copy of any
`proposed amended claims may be included as an
`Appendix to the Motion to Amend;
`(3) Opposition to Motion to Amend—up to twenty-five (25)
`pages; and
`(4) Patent Owner’s Reply to any Opposition—up to twelve
`(12) pages.
`See 37 C.F.R. § 42.5(b).
`In connection with Motions to Amend, attention is directed to
`Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (15 July
`2015).
`
`VIII. Petitioner’s Reply
`Notwithstanding the page limit set forth in 37 C.F.R. § 42.24(c)(1),
`Petitioner’s Reply to any Patent Owner Opposition is limited to up to
`twenty-five (25) pages. See 37 C.F.R. § 42.5(b).
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`IPR2015-01993
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`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL …………………….. 19 Apr. 2016
` 09:30 a.m. (ET)
`
`DUE DATE 1 ................................................................ 15 June 2016
`Patent Owner Opposition to Petition
`Patent Owner Motion to Amend
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`DUE DATE 2 ………………………………………… 06 Sept. 2016
`Petitioner Reply to Patent Owner Opposition
`Petitioner Opposition to Motion to Amend
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`DUE DATE 3 ………………………………………… 05 Oct. 2016
`Patent Owner Reply to Opposition to
`Motion to Amend
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`DUE DATE 4 ………………………………………… 26 Oct. 2016
`Observation of cross-examination of reply witness
`Motion to Exclude Evidence
`Request for Oral Argument
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`DUE DATE 5 ………………………………………… 09 Nov. 2016
`Response to Observation
`Opposition to Motion to Exclude
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`DUE DATE 6 ………………………………………… 16 Nov. 2016
`Reply to Opposition to Motion to Exclude
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`DUE DATE 7 ………………………………………… 30 Nov. 2016
`Oral argument, if requested 1:30 pm (ET)
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`IPR2015-01993
`Patent 8,399,514 B2
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`PETITIONER:
`
`Robert W. Hahl
`Robert Mihail
`John K. Pike
`NEIFELD IP LAW
`rhahl@neifeld.com
`rmihail@neifeld.com
`jkpike@neifeld.com
`general@neifeld.com
`
`James T. Carmichael
`Carmichael IP, PLLC
`jim@carmichaelip.com
`
`PATENT OWNER:
`
`Michael Flibbert
`Maureen D. Queler
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`michael.flibbert@finnegan.com
`maureen.queler@finnegan.com
`
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