Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 38
` Entered: March 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.
`and MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`____________
`
`Case IPR2016-005101,2 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`____________
`
`
`Before KRISTINA M. KALAN, ROBERT A. POLLOCK, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`
`1 Petitioners Alembic Pharmaceuticals Limited from IPR2016-01596,
`Torrent Pharmaceuticals Limited from IPR2016-01636, and Amerigen
`Pharmaceuticals Limited from IPR2016-01665 have been joined as
`Petitioners to this proceeding.
`2 We exercise our discretion to issue one order to be entered in all five cases.
`The parties are not authorized to use this style heading for subsequent papers
`without Board preapproval.
`
`
`571-272-7822
`
`
`
` Paper No. 38
` Entered: March 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.
`and MYLAN LABORATORIES LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`____________
`
`Case IPR2016-005101,2 (Patent 6,858,650 B1)
`Case IPR2016-00512 (Patent 7,384,980 B2)
`Case IPR2016-00514 (Patent 7,855,230 B2)
`Case IPR2016-00516 (Patent 8,338,478 B2)
`Case IPR2016-00517 (Patent 7,985,772 B2)
`____________
`
`
`Before KRISTINA M. KALAN, ROBERT A. POLLOCK, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`
`1 Petitioners Alembic Pharmaceuticals Limited from IPR2016-01596,
`Torrent Pharmaceuticals Limited from IPR2016-01636, and Amerigen
`Pharmaceuticals Limited from IPR2016-01665 have been joined as
`Petitioners to this proceeding.
`2 We exercise our discretion to issue one order to be entered in all five cases.
`The parties are not authorized to use this style heading for subsequent papers
`without Board preapproval.
`
`
`
`IPR2016-00510 (Patent 6,858,650 B1)
`IPR2016-00512 (Patent 7,384,980 B2)
`IPR2016-00514 (Patent 7,855,230 B2)
`IPR2016-00516 (Patent 8,338,478 B2)
`IPR2016-00517 (Patent 7,985,772 B2)
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`Petitioner and Patent Owner requested oral hearing pursuant to 37
`C.F.R. § 42.70 in each of the above-referenced proceedings. Papers 35, 36.3
`The parties’ requests for oral hearing are granted.
`The proceedings will be conducted as a single, consolidated hearing,
`to commence at 1:00 PM EST on April 5, 2017, on the ninth floor of the
`Madison Building East, 600 Dulany Street, Alexandria, Virginia. The Board
`will provide a court reporter for the hearing and the reporter’s transcript will
`constitute the official record of the hearing.
`The hearing room can accommodate the lead counsel and a back-up
`counsel for each party. Other members of the parties will be accommodated,
`based on space availability, on a first-come, first-served basis. The hearing
`will be open to the public for in-person attendance that also will be
`accommodated on a first-come, first-served basis.
`Each party will have forty-five (45) minutes of total oral argument
`time. Petitioner bears the ultimate burden of proof that the patent claims at
`issue in this review are unpatentable. Petitioner, therefore, will proceed first
`to present its case regarding the pending grounds of unpatentability.
`Thereafter, Patent Owner will have the opportunity to respond to Petitioner’s
`
`
`3 Petitioner and Patent Owner filed substantively similar papers in all five
`cases. Unless otherwise noted, citations are to the papers filed in IPR2016-
`00510.
`
`
`
`2
`
`
`
`IPR2016-00510 (Patent 6,858,650 B1)
`IPR2016-00512 (Patent 7,384,980 B2)
`IPR2016-00514 (Patent 7,855,230 B2)
`IPR2016-00516 (Patent 8,338,478 B2)
`IPR2016-00517 (Patent 7,985,772 B2)
`
`case. If desired, Petitioner may reserve rebuttal time to respond to
`arguments presented by Patent Owner. Patent Owner may not reserve
`rebuttal time.
`At least seven (7) business days before the hearing date, each party
`shall serve on the other party any demonstrative exhibit(s) it intends to use
`during the hearing. See 37 C.F.R. § 42.70(b). The parties also shall provide
`a courtesy copy of any demonstrative exhibits to the Board at least three (3)
`business days before the hearing by emailing them to Trials@uspto.gov.
`Absent prior authorization, the parties shall not file any demonstrative
`exhibit(s) with the Board.
`Demonstrative exhibits are not evidence, but are intended to assist the
`parties in presenting their oral arguments to the Board. Demonstrative
`exhibits may not introduce new evidence or raise new argument but, instead,
`should cite to evidence in the record. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`of Michigan, IPR2013-00041 (PTAB January 27, 2014) (Paper 65), for
`guidance regarding the appropriate content of demonstrative exhibits.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits. For any objections that
`cannot be resolved after conferring, the parties may file jointly a one-page
`list of objections at least three (3) business days before the oral hearing. The
`list shall identify with particularity the portions of the demonstrative exhibits
`that are subject to objection and include a one-sentence statement of the
`basis for each objection. No argument or further explanation is permitted.
`
`
`
`3
`
`
`
`IPR2016-00510 (Patent 6,858,650 B1)
`IPR2016-00512 (Patent 7,384,980 B2)
`IPR2016-00514 (Patent 7,855,230 B2)
`IPR2016-00516 (Patent 8,338,478 B2)
`IPR2016-00517 (Patent 7,985,772 B2)
`
`The Board will consider any objections and schedule a conference call if
`deemed necessary. Otherwise, the Board will reserve ruling on the
`objections until the oral argument.
`Any objection to demonstrative exhibits that is not presented timely
`will be considered waived. Neither party shall be permitted to interrupt their
`opponent’s presentation to lodge objections to demonstrative exhibits during
`the oral hearing.
`Each party shall provide a hard copy of its demonstrative exhibits to
`the court reporter at the hearing. The parties also should note that at least
`one member of the panel will be attending the hearing electronically from a
`remote location, and that if a demonstrative is not made fully available or
`visible to the judge participating in the hearing remotely, that demonstrative
`will not be considered. 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 court reporter’s transcript and the ability of the judge
`participating in the hearing remotely to closely follow the presenter’s
`arguments.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument. If either party expects that its lead counsel will not be attending
`the oral argument, the parties should initiate a joint telephone conference
`with the Board no later than two (2) business days prior to the oral hearing to
`discuss the matter.
`
`
`
`4
`
`
`
`IPR2016-00510 (Patent 6,858,650 B1)
`IPR2016-00512 (Patent 7,384,980 B2)
`IPR2016-00514 (Patent 7,855,230 B2)
`IPR2016-00516 (Patent 8,338,478 B2)
`IPR2016-00517 (Patent 7,985,772 B2)
`
`
`Questions regarding specific audio-visual equipment shall be directed
`to the Board at 571-272-9797. Requests for audio-visual equipment are to
`be made no later than five (5) days before the oral hearing date in an email
`communication to Trials@uspto.gov. If a request is not received timely, the
`equipment may not be available on the day of the oral hearing.
`
`
`It is
`ORDERED that a consolidated oral hearing, conducted pursuant to
`the procedures outlined above, shall commence at 1:00 PM EST on April 5,
`2017, on the ninth floor of the Madison Building East, 600 Dulany Street,
`Alexandria, Virginia.
`
`
`
`
`
`
`5
`
`
`
`IPR2016-00510 (Patent 6,858,650 B1)
`IPR2016-00512 (Patent 7,384,980 B2)
`IPR2016-00514 (Patent 7,855,230 B2)
`IPR2016-00516 (Patent 8,338,478 B2)
`IPR2016-00517 (Patent 7,985,772 B2)
`
`FOR PETITIONER:
`Mitchell G. Stockwell
`D. Clay Holloway
`Alyson L. Wooten
`KILPATRICK TOWNSEND & STOCKTON LLP
`mstockwell@kilpatricktownsend.com
`cholloway@kilpatricktownsend.com
`awooten@kilpatricktownsend.com
`
`FOR PATENT OWNER:
`Jeffrey J. Oelke
`Robert E. Counihan
`WHAITE & CASE LLP
`joelke@whitecase.com
`recounihan@whitecase.com
`
`
`
`
`6
`
`
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