`Tel: 571-272-7822
`
`
`
`
`
`Paper 40
`Entered: May 14, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMNEAL PHARMACEUTICALS LLC AND
`AMNEAL PHARMACEUTICALS OF NEW YORK, LLC,
`Petitioner,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00608
`Patent 9,161,926 B2
`____________
`
`Before GRACE KARAFFA OBERMANN, SHERIDAN K. SNEDDEN,
`and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`IPR2018-00608
`Patent 9,161,926 B2
`
`
`Oral hearing in this case is set for June 5, 2019, if a hearing is
`
`requested by the parties and granted by the Board. Papers 11 and 31. Both
`
`parties have requested oral hearing pursuant to 37 C.F.R. § 42.70. Papers 35
`
`and 37. The parties’ requests for oral hearing are granted.
`
`A. Time and Format
`
`The hearing will commence at 10:00 AM Eastern Time on June 5,
`
`2019. The hearing will be open to the public, for in-person attendance, on
`
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`
`Virginia. In-person attendance will be accommodated on a first come, first
`
`served basis. The Board will provide a court reporter for the hearing and the
`
`reporter’s transcript will constitute the official record of the hearing.
`
`Per the parties’ request, Petitioner will have a combined 60 minutes to
`
`present argument in this case and Patent Owner will have 60 minutes to
`
`respond. Petitioner bears the ultimate burden of proof that Patent Owner’s
`
`claims at issue are unpatentable. Therefore, Petitioner will open the hearing
`
`by presenting their case regarding the challenged claims for which the Board
`
`instituted trial. After Petitioner’s presentation, Patent Owner will respond to
`
`Petitioner’s argument. Petitioner may reserve rebuttal time to respond to
`
`arguments presented by Patent Owner. In accordance with the Board’s
`
`August 2018 Trial Practice Guide Update (“TPGU”), Patent Owner may
`
`reserve up to 5 minutes of time for sur-rebuttal.
`
`The Trial Practice Guide Update provides an opportunity for the
`
`parties to request a pre-hearing conference. See TPGU 19 (“The purpose of
`
`the pre-hearing conference is to afford the parties the opportunity to preview
`
`(but not argue) the issues to be discussed at the oral hearing, and to seek the
`
`Board’s guidance as to particular issues that the panel would like addressed
`
`2
`
`
`
`IPR2018-00608
`Patent 9,161,926 B2
`
`by the parties.”). If either party desires a pre-hearing conference, the parties
`
`should jointly contact the Board at least seven business days before the
`
`hearing to request a conference call for that purpose.
`
`B. Demonstratives
`
`As set forth in 37 C.F.R. § 42.70(b), demonstrative exhibits shall be
`
`served on opposing counsel at least seven business days before the hearing.
`
`However, in regard to filing demonstrative exhibits, and in contrast to what
`
`is expressly stated in § 42.70(b), the parties shall file the demonstrative
`
`exhibits no later than two business days before the hearing, to allow the
`
`panel sufficient time to review the materials.
`
`The panel reminds the parties that demonstrative exhibits are not
`
`evidence, but are intended to assist the parties in presenting their oral
`
`arguments to the Board. The panel will distinguish evidence in the record
`
`from argument appearing in demonstrative exhibits, and all arguments must
`
`be supported by evidence already of record. The panel also reminds the
`
`parties that demonstrative exhibits are not a mechanism for making
`
`arguments not previously addressed in the Papers. The panel will not
`
`consider arguments or evidence appearing only in demonstrative exhibits.
`
`Due to the nature of the panel’s consideration of demonstrative
`
`exhibits, the panel does not anticipate that objections to such exhibits would
`
`likely be sustained. Nevertheless, to the extent that the parties object to the
`
`propriety of any demonstrative exhibit, we expect that the parties will meet
`
`and confer in good faith to resolve any objections to demonstrative exhibits.
`
`If such objections cannot be resolved, the parties may file any objections to
`
`demonstratives with the Board at least two business days before the hearing.
`
`The objections should identify with particularity which portions of the
`
`3
`
`
`
`IPR2018-00608
`Patent 9,161,926 B2
`
`demonstrative exhibits are subject to objection, include a copy of the
`
`objected-to portions, and include a one-sentence statement of the reason for
`
`each objection. No argument or further explanation is permitted. We will
`
`consider any objections and schedule a conference call if deemed necessary.
`
`Otherwise, we will reserve ruling on the objections. Any objection to
`
`demonstrative exhibits that is not timely presented will be considered
`
`waived.
`
`Finally, the parties are reminded that each 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 reporter’s transcript and for the benefit of the judge(s) who will be
`
`participating electronically from USPTO Regional Offices.
`
`C. Lead Counsel
`
`The Board expects lead counsel for each party to be present at the oral
`
`hearing, although any backup counsel may present the party’s argument. If
`
`either lead counsel is unable to be present at the hearing, the Board shall be
`
`advised by email no later than two (2) business days prior to the oral
`
`hearing, and such lead counsel shall be available for a conference call if
`
`necessary.
`
`D. Audio/Visual Equipment Requests
`
`Questions regarding specific audio-visual equipment should be
`
`directed to the Board at (571) 272-9797. Requests for audio-visual
`
`equipment are to be made 5 days in advance of the hearing date. The
`
`request is to be sent to Trials@uspto.gov. If the request is not received
`
`timely, the equipment may not be available on the day of the hearing.
`
`4
`
`
`
`IPR2018-00608
`Patent 9,161,926 B2
`
`
`
`
`Accordingly, it is
`
`ORDERED that oral argument for this proceeding shall commence at
`
`10:00 AM Eastern Time on June 5, 2019, on the ninth floor of Madison
`
`Building East, 600 Dulany Street, Alexandria, Virginia, and proceed in the
`
`manner set forth herein.
`
`
`
`
`
`PETITIONER:
`
`Dennies Varughese
`Dvarughe-ptab@sternekessler.com
`
`Adam LaRock
`Alarock-ptab@stenekessler.com
`
`PATENT OWNER:
`
`James Trainor
`jtrainor@fenwick.com
`
`Ewa Davison
`edavison@fenwick.com
`
`Elizabeth Hagan
`ehagan@fenwick.com
`
`
`5
`
`