`571-272-7822
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`Paper 46
`Date: August 22, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PHARMACOSMOS A/S,
`Petitioner,
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`v.
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`LUITPOLD PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
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`Case IPR2015-01490 (Patent 7,754,702 B2)1
`Case IPR2015-01493 (Patent 8,431,549 B2)
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`
`
`____________
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`Before TONI R. SCHEINER, LORA M. GREEN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
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`GREEN, Administrative Patent Judge.
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`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
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`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`both 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.”
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`
`
`IPR2015-01490 (Patent 7,754,702 B2)
`IPR2015-01493 (Patent 8,431,549 B2)
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`Petitioner, Pharmacosmos A/S, and Patent Owner, Luitpold
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`Pharmaceuticals, Inc., have requested for oral hearing pursuant to 37 C.F.R.
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`§ 42.70. Papers 42 and 43.2 The requests are granted. Oral arguments will
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`commence at 1:00 PM Eastern Time on September 22, 2016, on the ninth
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`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
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`Each party will have one hour and fifteen minutes to present
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`arguments. Petitioner bears the ultimate burden of proof that the claims at
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`issue in this review are unpatentable. Patent Owner bears the burden of
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`proof with respect to its Motion to Amend. Petitioner will open the hearing
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`by presenting its case regarding the challenged claims for which the Board
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`instituted trial. Patent Owner will then respond to Petitioner’s arguments
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`and also argue in support of its Motion to Amend.
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`Each party may reserve time to respond to arguments presented by the
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`other party with some limitations. More specifically, to the extent that
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`Petitioner reserves time, it may respond only to Patent Owner’s presentation
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`on all matters. To the extent that Patent Owner reserves time, it may
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`respond only to Petitioner’s arguments opposing the Motion to Amend. In
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`addition, the parties should meet and confer as to how they would like the
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`oral hearing to proceed. That is, we leave to the parties to determine if they
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`would like to argue the two proceedings simultaneously, or argue IPR2015-
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`01490, and then argue IPR2015-01493. The parties should jointly send an
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`email to the Board no later than September 20, 2015, informing the Board as
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`to that decision.
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`2 The paper numbers refer to the paper numbers in IPR2015-01490.
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`2
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`
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`IPR2015-01490 (Patent 7,754,702 B2)
`IPR2015-01493 (Patent 8,431,549 B2)
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`The hearing will be open to the public for in-person attendance that
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`will be accommodated on a first-come, first-served basis. The Board will
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`provide a court reporter, and the transcript shall constitute the official record
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`of the hearing.
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
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`least five business days before the hearing. The Board requests that such
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`exhibits be filed at the Board at least five business days before the hearing.
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`The parties must file any objections to the demonstratives with the Board at
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`least two business days before the hearing. Any objection to demonstrative
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`exhibits that is not timely presented will be considered waived. The
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`objections should identify with particularity which demonstratives are
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`subject to objection, and include a short (one sentence or less) statement of
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`the reason for each objection. The Board asks the parties to confine
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`demonstrative exhibit objections to those identifying egregious violations
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`that are prejudicial to the administration of justice. No argument or further
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`explanation is permitted. The Board will consider the objections and
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`schedule a conference if deemed necessary. Otherwise, the Board will
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`reserve ruling on the objections until after the oral argument. The parties
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`are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
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`Regents of the University of Michigan, IPR2013-00041 (PTAB
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`January 27, 2014) (Paper 65), for guidance regarding the appropriate content
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`of demonstrative exhibits. The parties are reminded that the demonstratives
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`do not constitute evidence, but are only aids to oral argument. The parties
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`are reminded further that the presenter must identify clearly and specifically
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`each demonstrative exhibit (e.g., by slide or screen number) referenced
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`3
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`
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`IPR2015-01490 (Patent 7,754,702 B2)
`IPR2015-01493 (Patent 8,431,549 B2)
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`during the hearing to ensure the clarity and accuracy of the reporter’s
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`transcript.
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`The Board expects lead counsel for each party to be present in person
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`at the oral hearing. Any counsel of record, however, may present the party’s
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`argument. If either party anticipates that its lead counsel will not be
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`attending the oral argument, the parties should initiate a joint telephone
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`conference with the Board no later than two business days prior to the oral
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`hearing to discuss the matter.
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`Any special requests for audio visual equipment should be directed to
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`Trials@uspto.gov. Requests for special equipment will not be honored
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`unless presented in a separate communication directed to the above email
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`address not less than five days before the hearing.
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`Accordingly, it is
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`ORDERED that oral arguments in this proceeding shall take place
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`beginning at 10:00 AM Eastern Time on February 6, 2015, on the ninth floor
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`of Madison Building East, 600 Dulany Street, Alexandria.
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`4
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`
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`IPR2015-01490 (Patent 7,754,702 B2)
`IPR2015-01493 (Patent 8,431,549 B2)
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`For PETITIONER:
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`Jennifer Tempesta
`Jennifer.tempesta@bakerbotts.com
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`Paul Ragusa
`Paul.ragusa@bakerbotts.com
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`Lisa Kole
`Lisa.kole@bakerbotts.com
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`Steven Lendaris
`Steven.lendaris@bakerbotts.com
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`For PATENT OWNER:
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`Michael Kaminski
`mkaminski@foley.com
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`George Quillin
`gquillin@foley.com
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`5
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