Trials@uspto.gov
`571.272.7822
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`Paper 10 (IPR2018-00168)
`Paper 10 (IPR2018-00169)
`Entered: June 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FLATWING PHARMACEUTICALS, LLC,
`Petitioner,
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`v.
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`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
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`Case IPR2018-00168 (Patent 9,549,938 B2)
`Case IPR2018-00169 (Patent 9,566,289 B2)
`____________
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`Before GRACE KARAFFA OBERMANN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
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`HULSE, Administrative Patent Judge.
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`SCHEDULING ORDER
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`571.272.7822
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`Paper 10 (IPR2018-00168)
`Paper 10 (IPR2018-00169)
`Entered: June 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLATWING PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00168 (Patent 9,549,938 B2)
`Case IPR2018-00169 (Patent 9,566,289 B2)
`____________
`
`
`Before GRACE KARAFFA OBERMANN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`A. DUE DATES
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`This order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate to different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be promptly filed. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7. Due to scheduling constraints, such as hearing room
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`availability, the parties must request a conference call with the panel if there
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`are any conflicts that arise with DUE DATE 7 as soon as practicable, which
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`will be modified only upon a showing of good cause.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see section B, below).
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`1. INITIAL CONFERENCE CALL
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`The parties are directed to contact the Board within a month of this
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`Order if there is a need to discuss proposed changes to this Scheduling Order
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`or proposed motions. See Trial Practice Guide, 77 Fed. Reg. at 48,765–66
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`(providing guidance in preparing for the initial conference call).
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`2. DUE DATE 1
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`The patent owner may file—
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`a.
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`b.
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`A response to the petition (37 C.F.R. § 42.120), and
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`A motion to amend the patent (37 C.F.R. § 42.121).
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`The patent owner must file any such response or motion to amend by
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`DUE DATE 1. If the patent owner elects not to file anything, the patent
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`owner must arrange a conference call with the parties and the Board. The
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`2
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`patent owner is cautioned that any arguments for patentability not raised in
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`the response will be deemed waived.
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`3. DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`4. DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`the patent owner’s motion to amend by DUE DATE 3.
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`5. DUE DATE 4
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`a.
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`Each party must file any motion for an observation on the
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`cross-examination testimony of a reply witness (see section C, below) by
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`DUE DATE 4.
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`b.
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`Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) by DUE DATE 4.
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`c.
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`Each party must file any request for oral argument (37 C.F.R.
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`§ 42.70(a)) by DUE DATE 4. In its request, the parties may state a
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`preference for the location of the oral argument at either the USPTO’s
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`Headquarters in Alexandria, Virginia or the Silicon Valley Office in San
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`Jose, California.
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`6. DUE DATE 5
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`a.
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`Each party must file any response to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b.
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`Each party must file any opposition to a motion to exclude
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`evidence by DUE DATE 5.
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`7. DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`3
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`8. DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`
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`B. CROSS-EXAMINATION
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`The parties are reminded that the Testimony Guidelines appended to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug.
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`14, 2012) (“Trial Practice Guide”) (Appendix D), apply to this proceeding.
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`The Board may impose an appropriate sanction for failure to adhere to the
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`Testimony Guidelines. 37 C.F.R. § 42.12. For example, reasonable
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`expenses and attorneys’ fees incurred by any party may be levied on a
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`person who impedes, delays, or frustrates the fair examination of a witness.
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`Except as the parties might otherwise agree, for each due date—
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`1.
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`Cross-examination begins after any supplemental evidence is
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`due. 37 C.F.R. § 42.53(d)(2).
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`2.
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`Cross-examination ends no later than a week before the filing
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`date for any paper in which the cross-examination testimony is expected to
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`be used. Id.
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`
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`C. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a reply witness because no further substantive
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`paper is permitted after the reply. See Trial Practice Guide, 77 Fed. Reg. at
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`48,768. The observation must be a concise statement of the relevance of
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`precisely identified testimony to a precisely identified argument or portion
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`of an exhibit. Each observation should not exceed a single, short paragraph.
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`4
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`The opposing party may respond to the observation. Any response must be
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`equally concise and specific. The parties may file one motion for
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`observation per witness that is proffered with the reply.
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`
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`D. PROTECTIVE ORDER
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`A protective order does not exist in this proceeding unless the parties
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`file one and the Board approves it. If either party files a motion to seal
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`before entry of a protective order, a jointly proposed protective order should
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`be presented as an exhibit to the motion. We encourage the parties to adopt
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`the Board’s default protective order if they conclude that a protective order
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`is necessary. See Default Protective Order, Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). If the parties choose
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`to propose a protective order deviating from the default protective order,
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`they must submit the proposed protective order jointly along with a redline
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`comparison of the proposed and default protective orders showing the
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`differences; and the parties must explain why the proposed deviations from
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`the default protective order are necessary.
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`The Board has a strong interest in the public availability of the
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`proceedings. We advise the parties that redactions to documents filed in this
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`proceeding should be limited to isolated passages consisting entirely of
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`confidential information, and that the thrust of the underlying argument or
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`evidence must be clearly discernible from the redacted versions. We also
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`advise the parties that information subject to a protective order will become
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`public if identified in a final written decision in this proceeding, and that a
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`motion to expunge the information will not necessarily prevail over the
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`public interest in maintaining a complete and understandable file history.
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`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
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`5
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`
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`E. MOTIONS TO SEAL
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`A party intending a document or thing to be sealed shall file a motion
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`to seal concurrent with the filing of the document or thing to be sealed. 37
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`C.F.R. § 42.14.
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`If seeking to file a portion of a document under seal, a redacted
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`version of the document must be filed publicly.
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`An unredacted version of the document must be filed confidentially
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`(i.e., as available to the “Parties and Board Only”). The unredacted version
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`must highlight or otherwise clearly indicate the portion(s) of the document
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`that have been redacted in the redacted version.
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`If the moving party is seeking to file under seal a document containing
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`information designated confidential by the opposing party, the motion to seal
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`must identify the party that has designated the material as confidential (“the
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`designating party”). Within five business days, the designating party must
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`file a response to the motion to seal that explains why the designated
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`information is confidential or should otherwise be sealed.
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`
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`F. COMMUNICATIONS WITH THE BOARD
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`Except as otherwise provided in the Rules, Board authorization is
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`required before filing a motion. 37 C.F.R. § 42.20(b). A party seeking to file
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`a non-preauthorized motion should request a conference to obtain
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`authorization to file the motion. Parties may request a conference with us by
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`contacting the Board staff by e-mail at Trials@uspto.gov or by telephone at
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`571-272-7822.
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`Finally, we refer the parties to the instructions on the Board’s website
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`at http://www.uspto.gov/ip/boards/bpai/prps.jsp regarding the proper use of
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`6
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`email communication to the Board. Specifically, an email requesting a
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`conference call should copy the other party, indicate generally the relief
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`being requested or the subject matter of the conference call, state whether
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`the opposing party opposes the request, and include multiple times when all
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`parties are available. The email may not contain substantive argument. The
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`parties also are reminded that they should discuss and attempt to resolve
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`issues with each other first before requesting conference calls with the
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`Board.
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`7
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`DUE DATE APPENDIX
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`DUE DATE 1 ........................................................... September 7, 2018
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`Patent owner’s response to the petition
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`Patent owner’s motion to amend the patent
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`DUE DATE 2 ........................................................... December 7, 2018
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`Petitioner’s reply to patent owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ............................................................... January 4, 2019
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`Patent owner’s reply to petitioner’s opposition to motion to amend
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`DUE DATE 4 ............................................................. January 25, 2019
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`Motion for observation regarding cross-examination of reply witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5 ............................................................. February 8, 2019
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6 ........................................................... February 15, 2019
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`Reply to opposition to motion to exclude
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`DUE DATE 7 ................................................................. March 1, 2019
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`Oral argument (if requested)
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`8
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`IPR2018-00168 (9,549,938 B2)
`IPR2018-00169 (9,566,289 B2)
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`PETITIONER:
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`Philip Segrest
`philip.segrest@huschblackwell.com
`
`Eric Rakestraw
`ptab-erakestraw@huschblackwell.com
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`
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`PATENT OWNER:
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`Aaron Maurer
`amaurer@wc.com
`
`David Berl
`dberl@wc.com
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`9
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