`Tel: 571-272-7822
`Entered: January 10, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ARGENTUM PHARMACEUTICALS LLC, MYLAN
`PHARMACEUTICALS INC., BRECKENRIDGE PHARMACEUTICAL,
`INC., and ALEMBIC PHARMACEUTICALS, LTD.,
`Petitioner,
`
`v.
`
`RESEARCH CORPORATION TECHNOLOGIES, INC.,
`Patent Owner.
`_____________
`
`Case IPR2016-002041
`Patent RE38,551 E
`______________
`
`
`
`Before FRANCISCO C. PRATS, JACQUELINE WRIGHT BONILLA, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 Case IPR2016-01101, Case IPR2016-01242, and Case IPR2016-01245
`have been joined with this proceeding.
`
`
`
`IPR2016-00204
`Patent RE38,551 E
`
`Argentum Pharmaceuticals LLC, Mylan Pharmaceuticals, Inc.,
`Breckenridge Pharmaceutical, Inc., and Alembic Pharmaceuticals, Ltd.
`(collectively “Petitioner”) and Research Corporation Technologies, Inc.
`(“Patent Owner”) each request an oral hearing in this proceeding pursuant to
`37 C.F.R. § 42.70. Papers 64, 67. We grant the requests. A hearing will
`commence at 10:00 AM Eastern Time on Tuesday, January 24, 2017, on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`VA.
`
`Each party will have 45 minutes of argument time. Petitioner bears
`the ultimate burden of persuasion that the claims at issue are unpatentable.
`Thus, Petitioner will open the hearing by presenting its case regarding the
`challenged claims for which the Board instituted trial. Patent Owner then
`will have the opportunity to respond to Petitioner’s arguments. Finally,
`Petitioner may use any time it has reserved for rebuttal to respond to
`arguments presented by Patent Owner. Patent Owner may not reserve
`rebuttal time.
`The Board will provide a court reporter, and the transcript shall
`constitute the official record of the hearing. The hearing will be open to the
`public for in-person attendance that will be accommodated on a first-come,
`first-served basis.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be
`served on opposing counsel at least seven (7) business days before the
`hearing. The parties are directed to St. Jude Medical, Cardiology Division,
`Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041,
`Paper 65 (PTAB Jan. 27, 2014), regarding the appropriate content of
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`2
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`IPR2016-00204
`Patent RE38,551 E
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`demonstrative exhibits. The Board expects 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 must file any objections to
`the demonstratives with the Board at least two business days before the
`hearing. The objections should identify with particularity which portions of
`the demonstratives are subject to objection, and include a short (one
`sentence or less) statement of the reason for each objection. No argument or
`further explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections. Any objection to the demonstrative
`exhibits that is not timely presented will be considered waived.
`The parties also shall provide the demonstrative exhibits to the Board
`by emailing them to Trials@uspto.gov. Despite the requirement in
`§ 42.70(b) for parties to file demonstratives, the parties shall not file any
`demonstrative exhibits in this case without prior authorization from the
`Board. A hard copy of the demonstratives should be provided to the court
`reporter at the hearing.
`The parties are reminded that, during the hearing, the presenter must
`identify clearly each demonstrative exhibit (e.g., by referencing a specific
`slide or screen number) to ensure clarity and accuracy of the reporter’s
`transcript.
`The Board expects lead counsel for each party to be present at the oral
`hearing, although any counsel of record may make the actual presentation.
`If either party anticipates that its lead counsel will not be in attendance at the
`oral hearing, the parties should initiate a joint telephone conference with the
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`3
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`IPR2016-00204
`Patent RE38,551 E
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`Board no later than five (5) business days prior to the oral hearing to discuss
`the matter.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment must be made at least five (5) business days in advance of the
`hearing date. The request is to be sent to Trials@uspto.gov. If the request is
`not timely received, the equipment may not be available on the day of the
`hearing.
`It is
`ORDERED that oral argument will commence at 10:00 AM ET on
`January 24, 2017.
`
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`4
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`IPR2016-00204
`Patent RE38,551 E
`
`For PETITIONER (IPR2016-00204):
`
`Matthew J. Dowd (mjdowd@dowdppllc.com)
`DOWD PLLC
`William G. Jenks (wjenks@jenksiplaw.com)
`JENKS IP LAW
`
`For PETITIONER (IPR2016-01101):
`
`Steven W. Parmelee (sparmelee@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`Jad A. Mills (jmills@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`For PETITIONER (IPR2016-01242):
`
`Matthew L. Fedowitz (mfedowitz@merchantgould.com)
`Daniel R. Evans (devans@merchantgould.com)
`MERCHANT & GOULD P.C.
`
`For PETITIONER (IPR2016-01245):
`
`Gary J. Speier (gspeier@carlsoncaspers.com)
`Jeffer Ali (jali@carlsoncaspers.com)
`CARLSON, CASPERS, VANDENBURGH,
`LINDQUIST & SCHUMAN, P.A.
`
`
`For PATENT OWNER:
`
`Andrea G. Reister (areister@cov.com)
`Jennifer L. Robbins (jrobbins@cov.com)
`Enrique D. Longton (rlongton@cov.com)
`COVINGTON & BURLING LLP
`
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`5
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