Trials@uspto.gov
`571-272-7822
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` Paper 34
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`Entered: April 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`PATENT TRIAL AND APPEAL BOARD
`_______________
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`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;
`KYLE BASS, and ERICH SPANGENBERG,
`Petitioners,
`v.
`BIOGEN MA INC.,
`Patent Owner.
`__________
`
`Case IPR2015-01993
`Patent 8,399,514 B2
`__________
`Before RICHARD E. SCHAFER, 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 34
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`Entered: April 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`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;
`KYLE BASS, and ERICH SPANGENBERG,
`Petitioners,
`v.
`BIOGEN MA INC.,
`Patent Owner.
`__________
`
`Case IPR2015-01993
`Patent 8,399,514 B2
`__________
`Before RICHARD E. SCHAFER, 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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`The parties have each filed a list of proposed motions pursuant to the order
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`entered March 22, 2016 (Paper 21). A conference call was scheduled for April 19,
`2016, to discuss the proposed motions. Upon review of the lists, it was determined
`that a conference call was unnecessary.
`
`Patent Owner (Biogen) has requested authorization to file two motions:
`1. A motion to antedate “Kappos 2006” (Ex. 1003A) and
`2. A motion to seal and for a protective order.
`With respect to the motion to antedate, the request is authorized. The
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`motion should be filed simultaneously with Biogen’s Patent Owner’s Response.
`The burden is on Biogen, as movant and/or proponent of an earlier date, to show
`entitlement to a date of invention earlier than Kappos 2006. Twenty-five (25)
`pages are authorized for the motion and any opposition and twelve (12) pages are
`authorized for any reply. To the extent that Patent Owner relies on diligence the
`Patent Owner shall present a diligence chart in the form of an exhibit. Any
`diligence chart must (1) list all days from the beginning of diligence through the
`end of diligence, (2) briefly state what happened on each day, and (3) cite the page
`and line of the motion on which the listed day is discussed. Every date gap in the
`diligence showing must be explained. The fact that there is a gap does not per se
`establish lack of reasonable diligence; and the fact that there is no gap does not per
`se establish reasonable diligence. In its merits response, Biogen should assume,
`arguendo, that its motion to antedate is denied, it being understood that if the
`motion to antedate is granted, the grounds based on the antedated prior art would
`no longer be viable. However, to present a complete decision the Board may find
`it appropriate to address the patentability merits assuming that in further
`proceedings it is determined that the motion to antedate should not have been
`granted.
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`2
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`IPR2015-01993
`Patent 8,399,514 B2
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`A revised schedule, corresponding to the parties’ previously stipulated
`schedule, is attached as an appendix.
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`Biogen also seeks to file a motion to seal confidential information or for a
`protective order. A motion to seal and for a protective order may be filed
`according to 37 C.F.R. § 42.14 and as set out in the Office Trial Practice Guide, 77
`Fed. Reg. 48756, 48760-61, Part E.
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`Petitioner, Coalition for Affordable Drugs V LLC., et al. (CFAD) proposed
`three motions:
`1. A motion to exclude certain evidence;
`2. A contingent motion to cross-examine Dr. Katherine Dawson and
`Dr. Richard A. Rudick, in the event that Drs. Dawon’s and
`Rudick’s testimony is submitted by Patent Owner, Biogen Ma, Inc
`(Biogen); and
`3. A motion opposing the benefit of provisional application
`60/888,921.
`The filing of a motion to exclude evidence is already scheduled in the March
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`22 order. See also 37 CFR § 42.64(c). As to any declarations or affidavits
`submitted during the prosecutions that led to the issuance of Biogen’s involved
`patent, those documents are part of the administrative record of the patent and are,
`in general, admissible. However, in order to be given any weight, the
`declarant/affiant must be made available for cross-examination in the manner
`specified in 37 C.F.R. § 42.51(b)(1)(ii). To the extent that an affidavit or
`declaration asserts tests or technical data, any submissions, including the
`prosecution affidavits, must also comply with 37 C.F.R. § 42.65(b). CFAD may
`also argue the sufficiency of the showings as part of its Reply.
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`The proposed contingent motion to take the cross-examination of Drs.
`Dawson and Rudick is unnecessary. Affidavit testimony submitted in this
`proceeding is subject to cross-examination. 37 C.F.R. § 42.51(b)(1)(ii).
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`3
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`IPR2015-01993
`Patent 8,399,514 B2
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`The proposed motion attacking the benefit of the provisional application also
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`is unnecessary. No benefit has been “accorded” to the filing date of Biogen’s
`Provisional Application. CAFD may file an opposition to Biogen’s motion for
`benefit as indicated on the attached schedule.
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`SO ORDERED.
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`4
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`IPR2015-01993
`Patent 8,399,514 B2
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`DUE DATE APPENDIX
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`DUE DATE 1 ....................................................................................... 22 June 2016
`Patent Owner Opposition to Petition
`Motion to Antedate
`Motion to Amend
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`DUE DATE 2 ........................................................................................ 21 Sept. 2016
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`Petitioner Reply to Patent Owner Opposition
`Petitioner Opposition to Antedating
`Petitioner Opposition to Motion to Amend
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`DUE DATE 3 .......................................................................................... 12 Oct. 2016
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`Patent Owner Reply to Opposition to Amend
`Patent Owner Antedating Reply
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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 09:30 am (ET)
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`5
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`IPR2015-01993
`Patent 8,399,514 B2
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`PETITIONER:
`James T. Carmichael
`Carol A. Spiegel
`Carmichael IP, PLLC
`jim@carmichaelip.com
`carol@carmichaelip.com
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`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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`6
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