Trials@uspto.gov
`571-272-7822
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`Paper 27
`Entered: September 28, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC and
`PAR PHARMACEUTICAL, INC.,
`Petitioners,
`
`v.
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`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
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`Cases: IPR2015-01903
` Patent 8,731,963 B1
`
`____________
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`
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`
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`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL, and
`BRIAN P. MURPHY, Administrative Patent Judges.
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`MURPHY, Administrative Patent Judge.
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`
`
`ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
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`
`
`

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`IPR2015-01903
`Patent 8,731,963 B1
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`
`
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`We instituted trial in the above-referenced inter partes review proceedings
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`on March 25, 2016. Paper 10. Our Scheduling Order set the date for oral hearing
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`as October 14, 2016. Paper 11. Patent Owner Jazz Pharmaceuticals, Inc. (“Patent
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`Owner”) has requested 45 minutes for oral hearing in this case, pursuant to
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`37 C.F.R. § 42.70(a). Paper 25. Petitioners Amneal Pharmaceuticals LLC and
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`Par Pharmaceutical, Inc. (hereafter “Petitioners”) have requested that the case be
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`decided without oral argument, arguing that “all outstanding issues have been
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`decided on a nearly identical record in the related IPRs.” Paper 26. Having
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`considered the parties’ submissions, Patent Owner’s request for oral argument is
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`GRANTED.
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`Each party will have 30 minutes of total argument time. Petitioners bear the
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`ultimate burden of proof that the claims at issue are unpatentable. Therefore, at
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`oral hearing Petitioners will open the hearing by presenting their case with regard
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`to the challenged claims and ground on which we instituted trial. Thereafter,
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`Patent Owner will argue its opposition to Petitioners’ case. Petitioners may use
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`any time Petitioners reserve to rebut Patent Owner’s opposition.
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`The hearing will commence at 10:00 AM Eastern Time on
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`October 14, 2016. The hearing will be open to the public, for in-person
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`attendance, on the ninth floor of Madison Building East, 600 Dulany Street,
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`Alexandria, Virginia. In-person attendance will be accommodated on a first come,
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`first served basis.
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`The Board will provide a court reporter for the hearing and the reporter’s
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`transcript will constitute the official record of the hearing.
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits shall be served on
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`opposing counsel at least five business days before the hearing. The parties also
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`IPR2015-01903
`Patent 8,731,963 B1
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`shall provide the demonstrative exhibits to the Board at least two business days
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`prior to the hearing by emailing them to Trials@uspto.gov. The parties shall not
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`file any demonstrative exhibits in this proceeding without prior authorization from
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`the Board. The parties are directed to St. Jude Medical, Cardiology Division, Inc.
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`v. The Board of Regents of the University of Michigan, Case IPR2013-00041
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`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of
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`demonstrative exhibits.
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`We expect that the parties will meet and confer in good faith to resolve any
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`objections to demonstrative exhibits, but if such objections cannot be resolved, the
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`parties may file any objections to demonstratives with the Board at least two
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`business days before the hearing. The objections should identify with particularity
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`which portions of the demonstrative exhibits are subject to objection, include a
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`copy of the objected-to portions, and include a one-sentence statement of the
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`reason for each objection. No argument or further explanation is permitted. We
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`will consider any objections and schedule a conference call if deemed necessary.
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`Otherwise, we will reserve ruling on the objections. Any objection to
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`demonstrative exhibits that is not timely filed will be considered waived.
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` The Board expects lead counsel for each party to be present at the oral
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`hearing, although any backup counsel may present all or part of a party’s
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`argument. If either lead counsel is unable to be present at the hearing, the Board
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`shall be advised by email no later than two (2) business days prior to the oral
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`hearing, and such lead counsel shall be available for a conference call if necessary.
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`Questions regarding specific audio-visual equipment should be directed to
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`the Board at (571) 272-9797. Requests for audio-visual equipment are to be
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`made 5 days in advance of the hearing date. The request is to be sent to
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`Trials@uspto.gov. If the request is not received timely, the equipment may
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`IPR2015-01903
`Patent 8,731,963 B1
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`not be available on the day of the hearing. The parties are reminded that the
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`presenter must identify clearly and specifically each demonstrative exhibit (e.g., by
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`slide or screen number) referenced during the hearing to ensure the clarity and
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`4
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`accuracy of the reporter’s transcript.
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`
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`FOR PETITIONERS:
`
`Janine Carlan
`Janine.carlan@arentfox.com
`
`Richard Berman
`Richard.berman@arentfox.com
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`Bradford Frese
`Bradford.frese@arentfox.com
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`
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`FOR PATENT OWNERS:
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`Francis Cerrito
`nichcerrito@quinnemanuel.com
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`John Biernacki
`jvbiernacki@jonesday.com
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`Evangeline Shih
`evangelineshis@quinnemanuel.com
`
`Frank Calvosa
`frankcalvosa@quinnemanuel.com