Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`Paper 45
`
`
`
` Entered: May 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`PROTIVA BIOTHERAPEUTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00680 (Patent 9,404,127)
` Case IPR2018-00739 (Patent 9,364,435)1
`____________
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, SUSAN L.C. MITCHELL, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1This Order addresses issues that are common to both cases. We, therefore,
`issue a single Order that has been entered in each case.
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`Paper 45
`
`
`
` Entered: May 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`PROTIVA BIOTHERAPEUTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00680 (Patent 9,404,127)
` Case IPR2018-00739 (Patent 9,364,435)1
`____________
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, SUSAN L.C. MITCHELL, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1This Order addresses issues that are common to both cases. We, therefore,
`issue a single Order that has been entered in each case.
`
`
`
`
`IPR2018-00680 (Patent 9,404,127)
`IPR2018-00739 (Patent 9,364,435)
`
`
`Pursuant to our scheduling order, oral argument is scheduled to
`proceed on June 6, 2019, if requested by the parties. Paper 14.2 Petitioner
`and Patent Owner have both requested oral argument in IPR2018-00680
`(Papers 34, 35) and in IPR2018-00739 (Papers 39, 40). The requests are
`granted.
`The oral argument will commence at 1:00 PM EDT on Thursday, June
`6, 2019, at the USPTO headquarters in Alexandria, Virginia (Hearing Room
`A). The oral argument will be open to the public for in-person attendance,
`which will be accommodated on a first-come, first-served basis.
`Petitioner requests a total of 60 minutes of argument time per side for
`each of IPR2018-00680 (Paper 35) and IPR2018-00739 (Paper 40). Patent
`Owner requests a total of 20 minutes of argument time per side for IPR2018-
`00680 (Paper 34) and 40 minutes per side for IPR2018-00739 (Paper 39).
`Patent Owner further requests that arguments in IPR2018-00739 be held
`first, followed by separate arguments in IPR2018-00680, and that there be a
`separate transcript for each proceeding.
`Each party will have one hour total to present arguments in IPR2018-
`00739 and 45 minutes total to present arguments in IPR2018-00680. At the
`request of Patent Owner, the hearing will begin with IPR2018-00739
`followed by a separate hearing in IPR2018-00680.
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`patent claims at issue are unpatentable. Therefore, at oral argument and with
`respect to each proceeding, Petitioner will proceed first to present its case
`with respect to the pending grounds of unpatentability. Petitioner may
`
`
`2 Paper 14 was filed in IPR2018-00680. The same scheduling order was filed
`in IPR2018-00739. Paper 16.
`
`2
`
`
`
`IPR2018-00680 (Patent 9,404,127)
`IPR2018-00739 (Patent 9,364,435)
`
`reserve some of its argument time for rebuttal, but may not reserve more
`than half of its allotted time for rebuttal. Patent Owner will then respond to
`Petitioner’s initial presentation. Petitioner may then use the time it has
`reserved to reply to Patent Owner’s presentation. Patent Owner is permitted
`the opportunity to present a brief sur-rebuttal if requested at the hearing.
`The Board will provide a court reporter for the oral argument, and the
`reporter’s transcript will constitute the official record of the oral argument.
`The hearing transcript will be separate for each proceeding, and will be
`entered in the record of the corresponding proceeding.
`The parties shall serve any demonstrative exhibits on opposing
`counsel at least three business days before the hearing. The parties shall also
`provide a courtesy copy of any demonstrative exhibits to the Board no later
`than two business days before the hearing by emailing them to
`Trials@uspto.gov. Notwithstanding 37 C.F.R. § 42.70(b), the parties shall
`not file any demonstrative exhibits in these proceedings without prior
`authorization from the Board. Each party shall also provide a hard copy of
`its demonstrative exhibits to the court reporter and panel at 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
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. The parties shall confer with each other
`regarding any objections to demonstrative exhibits. For any issue that
`cannot be resolved after conferring, the parties may each file a one-page list
`of objections at least two business days before the hearing. The list should
`identify with particularity which demonstrative exhibits are subject to
`
`3
`
`
`
`IPR2018-00680 (Patent 9,404,127)
`IPR2018-00739 (Patent 9,364,435)
`
`objection and include a short statement of the reason for each objection. No
`argument or further explanation is permitted.
`The Board will consider the objections and schedule a telephone
`conference if deemed necessary. Otherwise, the Board will reserve ruling on
`the objections until after the oral argument. Any objection to demonstrative
`exhibits that is not timely presented will be considered waived.
`The parties are advised that at least one member of the panel will be
`attending the hearing from a remote location. 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 reporter’s transcript and the ability of
`the judge participating remotely to follow the presenter’s arguments. The
`parties should note that the remote judge will not be able to see what is
`projected on the screen in the hearing room.
`The Board expects lead counsel for each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If either party expects that its lead counsel will not be
`attending the oral hearing, the Board should be notified via a joint telephone
`conference call no later than two business days before the oral hearing to
`discuss the matter.
`The parties may request the use of audio-visual equipment during the
`oral hearing. Formal requests are to be made three business days in advance
`of the hearing date and should be sent to Trials@uspto.gov. If the request is
`not timely, the equipment may not be available on the day of the hearing.
`
`
`
`4
`
`
`
`IPR2018-00680 (Patent 9,404,127)
`IPR2018-00739 (Patent 9,364,435)
`
`PETITIONER:
`Michael Fleming
`mfleming@irell.com
`
`Crawford Wells
`mwells@irell.com
`
`PATENT OWNER:
`Michael Rosato
`mrosato@wsgr.com
`
`Steven Parmelee
`sparmelee@wsgr.com
`
`Sonja Gerrard
`sgerrard@wsgr.com
`
`5
`
`
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