Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 10
` December 07, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00934
`Patent 8,998,058 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`35 U.S.C. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 10
` December 07, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00934
`Patent 8,998,058 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`SCHEDULING ORDER
`35 U.S.C. § 42.5
`
`
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`A. GENERAL INSTRUCTIONS
`
`1. Requests for an Initial Conference Call
`
`Unless at least one of the parties requests otherwise, we will not conduct an
`
`initial conference call as described in the Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,765–66 (Aug. 14, 2012). In lieu of such a call, we
`
`instruct the parties as follows:
`
`(1)
`
`If a party wishes to request an initial conference call, that party
`
`shall request the call no later than 25 days after the institution of trial;
`
`(2) A request for a conference call shall include: (a) a list of
`
`proposed motions, if any, to be discussed during the call and (b) a list
`
`of dates and times when the parties are available for the call; and
`
`(3) The parties shall be prepared to discuss during the initial
`
`conference call their concerns, if any, relating to the schedule in this
`
`proceeding as set forth below.
`
`Absent good cause shown, we will not conduct an initial conference call
`
`later than 30 days after the institution of a trial.
`
`2. Protective Order
`
`A protective order does not exist in this proceeding unless the parties
`
`file one and the Board approves it. If either party files a motion to seal
`
`before entry of a protective order, a jointly proposed protective order should
`
`be presented as an exhibit to the motion. We encourage the parties to adopt
`
`the Board’s default protective order if they conclude that a protective order
`
`is necessary. See Default Protective Order, Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). 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-
`
`2
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`up comparison of the proposed and default protective orders showing the
`
`differences.
`
`The Board has a strong interest in the public availability of the
`
`proceedings. We advise the parties that redactions to documents filed in this
`
`proceeding should be limited strictly to isolated passages consisting entirely
`
`of confidential information, and that 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 will 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 in maintaining a complete and understandable file history.
`
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`
`3. Motions 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. See 37 C.F.R. § 42.121(a). Patent Owner should
`
`arrange for a conference call with the panel and opposing counsel at least one
`
`week before DUE DATE 1 in order to satisfy the conferral requirement. We
`
`direct the parties to 35 U.S.C. § 316(d) and 37 C.F.R. § 121 in connection
`
`with motions to amend.
`
`4. Discovery Disputes
`
`The panel encourages parties to resolve disputes relating to discovery
`
`on their own and in accordance with the precepts set forth in 37 C.F.R.
`
`§ 42.1(b). To the extent that a dispute arises between the parties relating to
`
`discovery, the parties shall meet and confer to resolve such a dispute before
`
`contacting the Board. If attempts to resolve the dispute fail, a party may
`
`3
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`request a conference call with the Board and the other party in order to seek
`
`authorization to move for relief.
`
`In any request for a conference call with the Board to resolve a
`
`discovery dispute, the requesting party shall: (a) certify that it has conferred
`
`with the other party in an effort to resolve the dispute; (b) identify with
`
`specificity the issues for which agreement has not been reached; (c) identify
`
`the precise relief to be sought; and (d) propose specific dates and times at
`
`which both parties are available for the conference call.
`
`5. Testimony
`
`The parties are advised 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.
`
`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.
`
`Whenever a party submits a deposition transcript as an exhibit in this
`
`proceeding, the submitting party shall file the full transcript of the deposition
`
`rather than excerpts of only those portions being cited. After a deposition
`
`transcript has been submitted as an exhibit, all parties who subsequently cite
`
`to portions of the transcript shall cite to the first-filed exhibit rather than
`
`submitting another copy of the same transcript.
`
`6. Cross-Examination
`
`Except as the parties might otherwise agree, for each due date—
`
`1.
`
`Cross-examination begins after any supplemental evidence is
`
`due. 37 C.F.R. § 42.53(d)(2).
`
`4
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`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. Id.
`
`B. 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.
`
`1. DUE DATE 1
`
`The patent owner may file—
`
`a.
`
`b.
`
`A response to the petition (37 C.F.R. § 42.120), and
`
`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. If the patent owner elects not to file anything, 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 will be deemed waived.
`
`5
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`2. 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. 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.
`
`4. DUE DATE 4
`
`a.
`
`Each party must file any observations on the cross-examination
`
`testimony of a reply witness (see section A.8, above) by DUE DATE 4.
`
`b.
`
`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.
`
`5. DUE DATE 5
`
`a.
`
`Each party must file any reply to a petitioner observation on
`
`cross-examination testimony by DUE DATE 5.
`
`b.
`
`Each party must file any opposition to a motion to exclude
`
`evidence by DUE DATE 5.
`
`6. DUE DATE 6
`
`Each party must file any reply for a motion to exclude evidence by
`
`DUE DATE 6.
`
`7. DUE DATE 7
`
`The oral argument (if requested by either party) is set for DUE
`
`DATE 7.
`
`6
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`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................ March 5, 2019
`
`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
`
`DUE DATE 2 ............................................................................... June 4, 2019
`
`Petitioner’s reply to Patent Owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ................................................................................ July 5, 2019
`
`Patent Owner’s sur-reply to reply
`
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ........................................................................... August 6, 2019
`
`Petitioner’s sur-reply to reply to opposition to motion to amend
`
`Motion to exclude evidence
`
`Request for oral argument
`
`DUE DATE 5 ......................................................................... August 13, 2019
`
`Opposition to motion to exclude
`
`DUE DATE 6 ......................................................................... August 20, 2019
`
`Reply to opposition to motion to exclude
`
`Request for prehearing conference
`
`DUE DATE 7 ..................................................................... September 5, 2019
`
`Oral argument (if requested)
`
`7
`
`
`
`IPR2018-00934
`Patent 8,998,058 B2
`
`PETITIONER:
`
`John Phillips
`Steven Katz
`Ryan O'Connor
`FISH & RICHARDSON P.C.
`phillips@fr.com
`katz@fr.com
`oconnor@fr.com
`
`
`PATENT OWNER:
`
`Elizabeth Weiswasser
`Adrian Percer
`Christopher Marando
`Christopher Pepe
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
`
`8
`
`
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