Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 55
`Entered: May 20, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENDO PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`DEPOMED, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00652 (Patent 6,723,340)
`Case IPR2014-00654 (Patent 6,340,475)
`Case IPR2014-00656 (Patent 6,635,280)1
`______
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN,
`GEORGIANNA W. BRADEN, and TINA E. HULSE,
`Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER
`Consolidated Hearing Order
`37 C.F.R. § 42.70
`
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case. The parties hereby are authorized to
`use this style heading when filing an identical paper in multiple proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`571-272-7822
`
`
`
`Paper 55
`Entered: May 20, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENDO PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`DEPOMED, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-00652 (Patent 6,723,340)
`Case IPR2014-00654 (Patent 6,340,475)
`Case IPR2014-00656 (Patent 6,635,280)1
`______
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN,
`GEORGIANNA W. BRADEN, and TINA E. HULSE,
`Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`ORDER
`Consolidated Hearing Order
`37 C.F.R. § 42.70
`
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case. The parties hereby are authorized to
`use this style heading when filing an identical paper in multiple proceedings,
`provided that such heading includes a footnote attesting that “the word-for-
`word identical paper is filed in each proceeding identified in the heading.”
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`
`
`Patent Owner and Petitioner each request an oral hearing pursuant to
`
`37 C.F.R. § 42.70. Papers 49, 50.2 Patent Owner requests a total of ninety
`
`(90) minutes to present its arguments, with forty five (45) minutes of time
`
`dedicated to argument in IPR2014-00652 that is “separate and apart from”
`
`forty five (45) minutes of time dedicated to consolidated arguments in
`
`IPR2014-00654 and IPR2014-00656. Paper 49, 2. Petitioner, by contrast,
`
`requests a total of two (2) hours of consolidated argument time in all three
`
`proceedings. Paper 50, 1.
`
`The parties’ requests are granted to the extent that an oral hearing will
`
`commence at 1:00 PM Eastern Time on Monday, June 15, 2015, on the
`
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`
`Virginia. The Board will provide a court reporter, and the transcript shall
`
`constitute the official record of the hearing.
`
`
`2 For convenience, we refer to papers filed in IPR2014-00652. Similar
`papers were filed in each of the other proceedings.
`2
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`
`The following conditions shall apply to the oral hearing format, public
`
`access to the hearing room, demonstrative exhibits, attendance of counsel,
`
`and requests for equipment.
`
`Oral Hearing Format
`
`We exercise our discretion to conduct a consolidated oral hearing
`
`pertaining to the three proceedings identified in the caption. Any argument
`
`or evidence presented by a party at the consolidated oral argument will be
`
`applicable only in a proceeding in which the record provides a proper
`
`foundation for such argument or evidence.
`
`Each party shall be limited to sixty (60) minutes of total time to
`
`present its arguments as to all three proceedings, with each party allotting
`
`their time among the three proceedings as they wish, according to the
`
`following format.
`
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`
`claims at issue in these proceedings are unpatentable. Petitioner will,
`
`therefore, open the hearing by presenting its case regarding the challenged
`
`claims and grounds for which the Board instituted trial. Petitioner may
`
`allocate its time as it wishes between the patents involved.
`
`3
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`
`Patent Owner will then respond to Petitioner’s arguments within the
`
`time allotted for Patent Owner’s argument and may present argument
`
`regarding its Motion to Exclude. Patent Owner may allocate its time as it
`
`wishes between the patents involved.
`
`Petitioner may reserve some of its argument time for rebuttal to
`
`arguments presented by Patent Owner. Immediately before commencing the
`
`time allotted for Petitioner’s argument, counsel for Petitioner shall advise the
`
`Board whether, and how much, time Petitioner wishes to reserve for rebuttal.
`
`Public Access to the Hearing Room
`
`Patent Owner “requests that the hearing room be closed to the public
`
`during the portions of oral argument where confidential information [is]
`
`discussed before the Board.” Paper 49, 3. Patent Owner does not present
`
`information sufficient to demonstrate any need to discuss sealed information
`
`at the oral hearing. Id. On this record, the Board’s interests in conducting
`
`the oral hearing in an efficient and open manner outweigh any demonstrated
`
`need for closing the hearing room to the public.
`
`Patent Owner’s request to close periodically the hearing room during
`
`argument is denied. The hearing will be open to the public for in-person
`
`4
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`attendance that will be accommodated on a first-come, first-served basis. To
`
`the extent that counsel for any party intends to present arguments related to
`
`information filed under seal, counsel shall not, at oral argument, reveal such
`
`sealed information. Instead, counsel shall make reference to such
`
`information without actually disclosing the information.
`
`Demonstrative Exhibits
`
`The parties shall serve any demonstrative exhibits on opposing
`
`counsel at least seven business days before the hearing. The parties also
`
`shall provide a courtesy copy of any demonstrative exhibits to the Board no
`
`later than two business days prior to the hearing by emailing them to
`
`Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`
`this proceeding without prior authorization from the Board.
`
`The parties shall confer with each other regarding any objections to
`
`demonstrative exhibits in each proceeding. For any issue that cannot be
`
`resolved after conferring, the parties may file jointly a one-page list of
`
`objections at least three business days prior to the hearing. The list should
`
`identify with particularity which demonstrative exhibits are subject to
`
`5
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`objection and include a short statement (no more than one sentence) of the
`
`reason for each objection. No argument or further explanation is permitted.
`
`The Board will consider the objections and schedule a telephone
`
`conference if deemed necessary. Otherwise, the Board will reserve ruling on
`
`the objections until after the oral argument. Any objection to demonstrative
`
`exhibits that is not presented timely will be considered waived.
`
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`
`content of demonstrative exhibits. The parties are reminded that the
`
`presenter must identify clearly and specifically each demonstrative exhibit
`
`(e.g., by slide or screen number) referenced during the hearings to ensure the
`
`clarity and accuracy of the reporter’s transcripts.
`
`The parties are advised that at least one member of the panel will be
`
`attending the hearing from a remote location, and that if a demonstrative is
`
`not made fully available or visible to the judge(s) presiding over the hearing
`
`remotely, that demonstrative will not be considered.
`
`
`
`6
`
`
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`
`Attendance of Counsel
`
`The Board expects lead counsel for each party to be present in person
`
`at the oral hearing. Any counsel of record, however, may present the party’s
`
`argument. If either party anticipates that its lead counsel will not be
`
`attending the oral argument, the parties should initiate a joint telephone
`
`conference with the Board no later than two business days prior to the oral
`
`hearing to discuss the matter.
`
`Requests for Equipment
`
`Questions regarding specific audio-visual equipment should be
`
`directed to the Board at (571) 272-9797. Requests for audio-visual
`
`equipment are to be made five days in advance of the hearing date. The
`
`request is to be sent to Trials@uspto.gov. If the request is not received
`
`timely, the equipment may not be available on the day of the hearing.
`
`
`
`Accordingly, it is
`
`ORDERED the parties’ request for an oral hearing is granted subject
`
`to the conditions set forth in this Order;
`
`7
`
`
`
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`
`FURTHER ORDERED that a consolidated oral argument in these
`
`proceedings shall take place beginning at 1:00 PM Eastern Time on
`
`Monday, June 15, 2015, on the ninth floor of Madison Building East, 600
`
`Dulany Street, Alexandria;
`
`FURTHER ORDERED that Patent Owner’s request to close
`
`periodically the hearing room during argument is denied; and
`
`FURTHER ORDERED that the parties are authorized to file jointly a
`
`one-page list of objections, which complies with this Order, at least three
`
`business days prior to the hearing.
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2014-00652 (Patent 6,723,340)
`IPR2014-00654 (Patent 6,340,475)
`IPR2014-00656 (Patent 6,635,280)
`
`PETITIONER:
`
`Bruce Haas
`Henry Renk
`Endo-IPR@fchs.com
`
`Stephen Yam
`syam@fchs.com
`
`Christopher Hill
`chill@fchs.com
`
`
`PATENT OWNER:
`
`Arlene Chow
`arlene.chow@hoganlovells.com
`
`Eric Lobenfeld
`eric.lobenfeld@hoganlovells.com
`
`Peter Noh
`peter.noh@hoganlovells.com
`
`Ernest Yakob
`ernest.yakob@hoganlovells.com
`
`9
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
