Trials@uspto.gov
`571-272-7822
`
`Paper 60
`Entered: March 30, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`AMNEAL PHARMACEUTICALS LLC, PAR PHARMACEUTICAL, INC.,
`AND WOCKHARDT BIO AG,
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Cases: IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)1
`____________
`
`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`
`MURPHY, Administrative Patent Judge.
`
`
`ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The parties
`are not authorized to use this style heading. Cases IPR2015-01810, 01813, 01814,
`01815, 01816, 01817, 01818, and 01820 have been joined to these proceedings.
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`We instituted trial in the above-referenced inter partes review proceedings
`on July 29, 2015. Paper 25.2 Our Scheduling Order set the date for oral hearing as
`April 19, 2016. Paper 26. Petitioners Amneal Pharmaceuticals LLC and Par
`Pharmaceutical, Inc. (hereafter “Petitioners”), and Patent Owner have requested a
`single consolidated oral hearing in the above-referenced cases (including joined
`proceedings), pursuant to 37 C.F.R. § 42.70(a). Papers 54, 57. The parties’
`request is GRANTED.
`Each party will have 90 minutes of total argument time. Petitioners bear the
`ultimate burden of proof that the claims at issue are unpatentable. Therefore, at
`oral hearing Petitioners will open the hearing by presenting their case with regard
`to the challenged claims and grounds on which we instituted trial. Thereafter,
`Patent Owner will argue its opposition to Petitioners’ case. Petitioners may use
`any time Petitioners reserve to rebut Patent Owner’s opposition.
`The hearing will commence at 9:00 AM Eastern Time on April 19, 2016.
`The hearing will be open to the public, for in-person attendance, on the ninth floor
`of Madison Building East, 600 Dulany Street, Alexandria, Virginia. In-person
`attendance will be accommodated on a first come, first served basis.
`The Board will provide a court reporter for the hearing and the reporter’s
`transcript will constitute the official record of the hearing.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits shall be served on
`opposing counsel at least five business days before the hearing. The parties have
`agreed to use one set of demonstrative exhibits for all of the above-referenced
`
`
`2 For ease of reference, all citations are to IPR2015-00545, unless otherwise noted.
`2
`
`
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`proceedings and to reference the exhibits and papers filed in IPR2015-00548 in
`their respective demonstrative exhibits for all common issues, except when
`otherwise necessary. Paper 54, 2; Paper 57, 1–2. The parties’ agreement
`regarding use of demonstrative exhibits is acceptable to the Board. The parties
`also shall provide the demonstrative exhibits to the Board at least 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 are directed to St. Jude Medical, Cardiology Division,
`Inc. v. The Board of Regents of the University of Michigan, Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`We expect that the parties will meet and confer in good faith to resolve any
`objections to demonstrative exhibits, but if such objections cannot be resolved, the
`parties may file any objections to demonstratives with the Board at least two
`business days before the hearing. The objections should identify with particularity
`which portions of the demonstrative exhibits are subject to objection, include a
`copy of the objected-to portions, and include a one-sentence statement of the
`reason for each objection. No argument or further explanation is permitted. We
`will consider any objections and schedule a conference call if deemed necessary.
`Otherwise, we will reserve ruling on the objections. Any objection to
`demonstrative exhibits that is not timely filed will be considered waived.
` The Board expects lead counsel for each party to be present at the oral
`hearing, although any backup counsel may present all or part of a party’s
`argument. If either lead counsel is unable to be present at the hearing, the Board
`
`
`
`3
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`shall be advised by email no later than two (2) business days prior to the oral
`hearing, and such lead counsel shall be available for a conference call if necessary.
`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 5 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. 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 hearing to ensure the clarity and
`accuracy of the reporter’s transcript.
`
`
`
`FOR PETITIONERS:
`
`Matthew C. Ruedy
`Steven A. Maddox
`MADDOX EDWARDS PLLC
`mruedy@meiplaw.com
`smaddox@meiplaw.com
`
`Janine Carlan
`Bradford Frese
`Richard Berman
`ARENT FOX LLP
`bradford.frese@arentfox.com,
`richard.berman@arentfox.com,
`janine.carlan@arentfox.com
`
`
`
`
`
`4
`
`

`
`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,547,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`
`
`Laura Vogel
`Patrick Gallagher
`DUANE MORRIS LLP
`LAVogel@duanemorris.com
`PCGallagher@duanemorris.com
`
`
`
`FOR PATENT OWNER:
`
`F. Dominic Cerrito
`Evangeline Shih
`Frank C. Calvosa
`Eric C. Stops
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`nickcerrito@quinnemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`ericstops@quinnemanuel.com
`
`John V. Biernacki
`JONES DAY
`jvbiernacki@jonesday.com
`
`
`
`5