`Trials@uspto.gov
`571-272-7822
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`Paper No. 48
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` Entered: July 18, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)1, 2
`____________
`
`
`
`Before TONI R. SCHEINER, DEBORAH KATZ, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`SCHEINER, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`                                                            
`1 We exercise our discretion to issue one Order to be filed in both cases. The
`parties are not authorized to use this style heading for any subsequent papers.
`2 Case IPR2016-00283 has been joined with Case IPR2015-01117 and case
`IPR2016-00284 has been joined with Case IPR2015-01127.
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
` 
`
`
`A trial in each of these proceedings was instituted on November 4, 2015.
`IPR2015-01117, Paper 13; IPR2015-01127, Paper 13. A Scheduling Order entered
`on the same date set the oral hearing for July 26, 2016, if requested by the parties
`and granted by the Board. IPR2015-01117, Paper 14; IPR2015-01127, Paper 14.
`Patent Owner and Petitioner each requested oral hearing pursuant to 37 C.F.R.
`§ 42.70(a) in each of these proceedings. IPR2015-01117, Papers 37, 39; IPR2015-
`01127, Papers 34, 36. In addition, Petitioner requested that both cases be heard
`together. IPR2015-01117, Paper 39; IPR2015-01127, Paper 36. The parties’
`requests are granted according to the terms set forth below.
`A consolidated oral argument for IPR2015-01117 and IPR2015-011127 will
`commence at 10:00 AM Eastern Time, on July 26, 2016, on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`Petitioner and Patent Owner each will have 60 minutes to present arguments.
`Petitioner bears the ultimate burden of proof that the claims at issue in these
`reviews are unpatentable. Petitioner will, therefore, open the hearing by presenting
`its case regarding the challenged claims for which the Board instituted trial. Patent
`Owner will then respond to Petitioner’s arguments. Petitioner may reserve time to
`reply to arguments presented by Patent Owner.
`The oral hearing will be open to the public for in-person attendance. In-
`person attendance will be accommodated on a first come, first serve basis.
`The Board will provide a court reporter for the hearing and the reporter’s
`transcript will constitute the official record of the hearing for both cases.
`Any demonstrative exhibits must be served at least five business days before
`the hearing. The parties also shall provide a courtesy copy of any demonstrative
`exhibits to the Board at least five business days prior to the hearing by emailing
`them to Trials@uspto.gov, and the parties shall not file their demonstrative
`2
`
` 
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
` 
`exhibits in these proceedings without prior authorization from the Board. Each
`party shall provide a hard copy of their demonstratives to the court reporter at the
`hearing. Demonstrative exhibits are not evidence and are intended only to assist
`the parties in presenting their oral argument to the panel. Instead, demonstrative
`exhibits should cite to evidence in the record. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. 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. The parties shall meet
`and confer to discuss any objections to demonstrative exhibits at least three
`business days before the hearing. If any issues regarding demonstratives remain
`unresolved after the parties meet and confer, the parties shall file jointly a one-page
`list of objections to the demonstrative exhibits at least two business days before the
`hearing. For each objection, the list must identify with particularity the
`demonstratives subject to the objection and include a short, one-sentence statement
`explaining the objection. We will consider the objections and schedule a
`conference call if necessary. Otherwise, we will reserve ruling on the objections
`until the hearing or after the hearing. Any objection to demonstrative exhibits not
`presented timely will be considered waived. The parties also are reminded that the
`presenter must identify clearly and specifically each demonstrative exhibit (e.g., by
`slide or screen number) or page of the record 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
`hearing. Lead or backup counsel, however, may present the party’s argument. If
`either party anticipates that its lead counsel will not be attending the hearing, that
`party should initiate a joint telephone conference with the other party and the panel
`no later than two business days prior to the hearing to discuss the matter.
`
` 
`
`3
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
` 
`
`Any special requests for audio visual equipment should be directed to
`Trials@uspto.gov at least three business days in advance of the hearing.
`
`It is
`
`ORDERED that oral argument will commence at 10:00 AM ET, on July 26,
`2016.
`
` 
`
`4
`
`

`

`Case IPR2015-01117 (Patent 8,642,012 B2)
`Case IPR2015-01127 (Patent 8,404,215 B1)
` 
`For PETITIONER:
`
`David H. Silverstein
`Aziz Burgy
`AXINN, VELTROP & HARKRIDER LLP
`dsilverstein@axinn.com
`aburgy@axinn.com
`
`For PATENT OWNER:
`Robert Green
`Emer L. Simic
`Jessica Tyrus
`GREEN, GRIFFITH & BORG-BREEN, LLP
`rgreen@greengriffith.com
`esimic@greengriffith.com
`jtyrus@greengriffith.com
`
`Lauren Stevens
`HORIZON PHARMA USA, INC.
`lstevens@horizonpharma.com
`
`Dennis Bennett
`GLOBAL PATENT GROUP, LLC
`dennisbennett@globalpatentgroup.com
`
`Matthew C. Phillips
`RENAISSANCE IP LAW GROUP LLP
`matthew.phillips@renaissanceiplaw.com
`
`
` 
`
`5
`
`