Trials@uspto.gov
`571-272-7822
`
`
` Paper 54
`Entered: May 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LUPIN LTD., LUPIN PHARMACEUTICALS INC., INNOPHARMA
`LICENSING, INC., INNOPHARMA LICENSING LLC, INNOPHARMA
`INC., INNOPHARMA LLC, MYLAN PHARMACEUTICALS INC., and
`MYLAN INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`_______________
`Case IPR2015-01097 (US Patent No. 8,754,131 B2)
`Case IPR2015-01099 (US Patent No. 8,669,290 B2)
`Case IPR2015-01100 (US Patent No. 8,927,606 B1)
`Case IPR2015-01105 (US Patent No. 8,871,813 B2)1
`_______________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`HEARING ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 IPR2016-00089 has been joined with IPR2015-01097; IPR2016-00091 has
`been joined with IPR2015-01100; and IPR2016-00090 has been joined with
`IPR2015-01105. This Order addresses issues common to all cases identified
`in the caption.
`
`
`
`571-272-7822
`
`
` Paper 54
`Entered: May 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LUPIN LTD., LUPIN PHARMACEUTICALS INC., INNOPHARMA
`LICENSING, INC., INNOPHARMA LICENSING LLC, INNOPHARMA
`INC., INNOPHARMA LLC, MYLAN PHARMACEUTICALS INC., and
`MYLAN INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.,
`Patent Owner.
`_______________
`Case IPR2015-01097 (US Patent No. 8,754,131 B2)
`Case IPR2015-01099 (US Patent No. 8,669,290 B2)
`Case IPR2015-01100 (US Patent No. 8,927,606 B1)
`Case IPR2015-01105 (US Patent No. 8,871,813 B2)1
`_______________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`HEARING ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 IPR2016-00089 has been joined with IPR2015-01097; IPR2016-00091 has
`been joined with IPR2015-01100; and IPR2016-00090 has been joined with
`IPR2015-01105. This Order addresses issues common to all cases identified
`in the caption.
`
`
`
`
`Case IPR2015-01097 (US Patent No. 8,754,131 B2)
`Case IPR2015-01099 (US Patent No. 8,669,290 B2)
`Case IPR2015-01100 (US Patent No. 8,927,606 B1)
`Case IPR2015-01105 (US Patent No. 8,871,813 B2)
`
`
`The parties filed a joint request for an oral hearing pursuant to 37
`C.F.R. § 42.70. Paper 48, 1.2 The parties request a consolidated hearing for
`these proceedings, “which involve some common parties and related
`patents.” Id. at 2. We grant the parties’ request for an oral hearing of “two
`hours total” in duration, subject to the following conditions. Id.
`The hearing will commence at 10:00 AM Eastern Standard Time on
`June 9, 2016, on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, VA. The Board will provide a court reporter for the
`hearing, and the transcript will constitute the official record of the hearing.
`Each party shall have 60 minutes of total argument time. Petitioner
`bears the ultimate burden of proof that the patent claims at issue are
`unpatentable. Petitioner will proceed first and, pursuant to the parties’
`agreement, shall have 45 minutes to present its case with regard to the
`challenged claims. Paper 48, 3. Patent Owner shall then have 60 minutes to
`respond to Petitioner’s case. Id. After that, Petitioner shall have 15 minutes
`of rebuttal time to reply to Patent Owner’s arguments. Id. Any argument or
`evidence presented by a party at the consolidated oral hearing shall be
`applied only in a proceeding in which the record provides a proper
`foundation for such argument or evidence.
`Patent Owner requests to be heard on any motions to exclude filed by
`either party, whereas Petitioner does not believe that is necessary. Id. at 2.
`Either party is free to dedicate a portion of their allotted time to procedural
`issues, including motions to exclude and objections; however, no additional
`
`
`2 The requests filed in each proceeding are substantially identical. For
`convenience, we refer to the paper filed in IPR2015-01097.
`
`2
`
`
`
`
`Case IPR2015-01097 (US Patent No. 8,754,131 B2)
`Case IPR2015-01099 (US Patent No. 8,669,290 B2)
`Case IPR2015-01100 (US Patent No. 8,927,606 B1)
`Case IPR2015-01105 (US Patent No. 8,871,813 B2)
`
`time shall be provided for those purposes. Petitioner is reminded that
`rebuttal time may not be used to raise new issues, but shall be limited strictly
`to responding to arguments raised and discussed by Patent Owner.
`Both parties request that, in addition to the counsel making the
`argument using his or her computer to show the demonstratives, “two
`counsel at the counsel’s table be allowed to use their computers at the
`hearing . . ., to avoid the need for the parties to bring entire paper copies of
`the record into the hearing room and to facilitate efficient answering of panel
`questions.” Paper 48, 3. The parties’ requests are reasonable and are
`granted.
`Both parties seek to reserve seats in the hearing room. Id. Due to
`hearing room scheduling constraints, however, the hearing room assigned to
`these proceedings may not have the capacity to accommodate all twenty (20)
`anticipated attendees identified in the request. Id. In-person attendance
`shall be accommodated on a first-come, first-served basis.
` The oral hearing shall be open to the public for in-person attendance.
`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.
`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. See also CBS Interactive Inc. v. Helferich
`Patent Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper
`
`
`
`
`3
`
`
`
`Case IPR2015-01097 (US Patent No. 8,754,131 B2)
`Case IPR2015-01099 (US Patent No. 8,669,290 B2)
`Case IPR2015-01100 (US Patent No. 8,927,606 B1)
`Case IPR2015-01105 (US Patent No. 8,871,813 B2)
`
`118) (The Board has discretion to limit the parties’ demonstratives to pages
`in the record should there be no easy resolution to objections over
`demonstratives.).
`Demonstrative exhibits, if any, must be served no later than five
`business days before the hearing. 37 C.F.R. § 42.70(b). The parties are
`instructed, however, to refrain from filing any demonstrative exhibits in
`these proceedings. The parties 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 confer with each other regarding any objections to
`demonstrative exhibits in each proceeding. The parties are instructed to
`refrain from raising unreasonable objections to demonstrative exhibits.
`Specifically, the panel is capable of distinguishing evidence and arguments
`that are of record from those that are not. Any final decisions issued in these
`proceedings will incorporate only evidence and argument that are of record
`in these proceedings.
`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 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.
`Any objection to demonstrative exhibits that is not timely presented
`will be deemed waived. Neither party shall be permitted to interrupt their
`
`
`
`
`4
`
`
`
`Case IPR2015-01097 (US Patent No. 8,754,131 B2)
`Case IPR2015-01099 (US Patent No. 8,669,290 B2)
`Case IPR2015-01100 (US Patent No. 8,927,606 B1)
`Case IPR2015-01105 (US Patent No. 8,871,813 B2)
`
`opponent’s presentation to lodge objections to demonstrative exhibits during
`the oral hearing. A hard copy of the demonstratives should be provided to
`the court reporter at the hearing.
`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 no later than 5 days in advance of the hearing date. The
`request is to be sent directly 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.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, lead or backup counsel may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the oral hearing, 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.
`
`It is
`ORDERED that oral arguments in this proceeding shall take place
`beginning at 10:00 AM Eastern Standard Time on June 9, 2016, on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`5
`
`
`
`Case IPR2015-01097 (US Patent No. 8,754,131 B2)
`Case IPR2015-01099 (US Patent No. 8,669,290 B2)
`Case IPR2015-01100 (US Patent No. 8,927,606 B1)
`Case IPR2015-01105 (US Patent No. 8,871,813 B2)
`
`PETITIONER:
`Deborah H. Yellin
`Jonathan Lindsay
`Teresa Rea
`Shannon Lentz
`CROWELL & MORING LLP
`DYellin@crowell.com
`JLindsay@crowell.com
`trea@crowell.com
`slentz@crowell.com
`
`PETITIONER: INNOPHARMA
`Bryan Skelton
`Jitendra Malik
`Lance Soderstrom
`Hidetada James Abe
`Joseph Janusz
`ALSTON & BIRD LLP
`bryan.skelton@alston.com
`jitty.malik@alston.com
`lance.soderstrom@alston.com
`james.abe@alston.com
`joe.janusz@alston.com
`
`
`PATENT OWNER:
`Bryan C. Diner
`M. Andrew Holtman
`Joshua L. Goldberg
`Justin J. Hasford
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`bryan.diner@finnegan.com
`andy.holtman@finnegan.com
`joshua.goldberg@finnegan.com
`justin.hasford@finnegan.com
`
`
`
`
`6
`
`
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