Trials@uspto.gov Paper 57
`571-272-7822 Entered: October 31, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ELI LILLY AND COMPANY
`Petitioner
`v.
`TEVA PHARMACEUTICALS INTERNATIONAL GMBH
`Patent Owner.
`
`
`
`Case IPR2018-01422 (Patent No. 9,340,614)
`Case IPR2018-01423 (Patent No. 9,266,951)
`Case IPR2018-01424 (Patent No. 9,346,881)
`Case IPR2018-01425 (Patent No. 9,890,210)
`Case IPR2018-01426 (Patent No. 9,890,211)
` Case IPR2018-01427 (Patent No. 8,597,649)1
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1This Order addresses issues that are common to all six cases. We,
`therefore, issue a single Order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`571-272-7822 Entered: October 31, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ELI LILLY AND COMPANY
`Petitioner
`v.
`TEVA PHARMACEUTICALS INTERNATIONAL GMBH
`Patent Owner.
`
`
`
`Case IPR2018-01422 (Patent No. 9,340,614)
`Case IPR2018-01423 (Patent No. 9,266,951)
`Case IPR2018-01424 (Patent No. 9,346,881)
`Case IPR2018-01425 (Patent No. 9,890,210)
`Case IPR2018-01426 (Patent No. 9,890,211)
` Case IPR2018-01427 (Patent No. 8,597,649)1
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1This Order addresses issues that are common to all six cases. We,
`therefore, issue a single Order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`The date set for oral argument in these six proceedings is
`November 22, 2019, if either party requests oral argument and the Board
`grants the request. IPR2018-01422, Paper 15, 8.2 Both parties have
`requested oral argument pursuant to 37 C.F.R. § 42.70. Papers 52, 53. Both
`parties have requested a consolidated argument for the six proceedings, in
`which each side is allotted 60 minutes for its arguments. Id. The parties’
`requests are granted to the extent set forth below.
`A single combined oral argument for all six cases will commence at
`1:00 PM Eastern Time, on Friday, November 22, 2019. The oral
`argument will be conducted on the ninth floor of Madison Building East,
`600 Dulany Street, Alexandria, Virginia. The oral argument will be open to
`the public for in-person attendance, which will be accommodated on a first-
`come, first-served basis. 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.
`As there is significant commonality of issues in the six proceedings,
`we believe that it would be appropriate to have a combined hearing with
`each party presenting its arguments in all cases in a single argument, and to
`allocate each party a total of 60 minutes to present arguments. Because
`Petitioner bears the ultimate burden of proof that the claims at issue are
`unpatentable, Petitioner will begin the oral argument by presenting its case
`regarding the challenged claims at issue and any pending motions that it may
`have filed. Thereafter, Patent Owner will argue its opposition to Petitioner’s
`case, and can present on its motions to strike and exclude. Petitioner may
`
`
`2 Where the same or similar papers have been filed in multiple proceedings,
`we refer herein to the papers filed in Case IPR2018-01422.
`2
`
`
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`reserve time to rebut Patent Owner’s opposition and on any pending
`motions. Finally, Patent Owner may reserve time to present a brief
`sur-rebuttal to Petitioner’s rebuttal.
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served at least seven (7) business days before the hearing date. The
`demonstrative exhibits shall be filed with the Board no later than five (5)
`business days before the hearing date (i.e., no later than Nov. 15, 2019).
`Demonstrative exhibits are not evidence, but merely a visual aid for use
`at the hearing, and should be clearly marked as such. For example,
`each slide of the demonstratives may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`Demonstrative exhibits shall not introduce new arguments or
`evidence. The parties shall meet and confer in good faith to discuss any
`objections to demonstrative exhibits at least three (3) business days before
`the hearing. If any issues regarding demonstratives remain unresolved after
`the parties meet and confer, the parties shall jointly file a one-page list of
`objections to the demonstrative exhibits with the Board at least two (2)
`business days before the hearing. For each objection, the list must identify
`with particularity the demonstratives subject to the objection and include a
`short, one-sentence statement explaining the objection. We will consider the
`objections and schedule a conference call if necessary. Regardless of
`whether either party disputes the propriety of any demonstrative exhibit, we
`consider demonstrative exhibits only to the extent (1) they elucidate the
`parties’ arguments presented during the hearing and (2) they include only
`arguments and/or evidence already of record in the proceedings. For further
`guidance on what constitutes an appropriate demonstrative exhibit, the
`
`
`
`3
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`parties are directed to CBS Interactive Inc. v. Helferich Patent Licensing,
`LLC, IPR2013-00033, Paper 118 (PTAB Oct. 23, 2013).
`We expect lead counsel for each party to be present at the hearing;
`however, any backup counsel may make the actual presentation, in whole or
`in part. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758
`(Aug. 14, 2012). If lead counsel for either party is unable to attend the
`hearing, the parties shall request a joint telephone conference call no later
`than two (2) days prior to the hearing date to discuss the matter.
`At least one member of the panel may be attending the hearing
`electronically from a remote location and, if so, will have access only to the
`courtesy copy of the demonstratives provided in advance, as referenced
`above, and will not be able to view the projection screen in the hearing
`room. We take this opportunity to remind the parties 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 to enable any judge that is
`attending the hearing from a remote location to follow the presentation.
`Requests for special accommodations or audio-visual equipment are
`to be made at least five (5) business days in advance of the hearing date.
`Such requests must be sent to Trials@uspto.gov. If the requests are not
`received timely, requested accommodations and/or equipment may not be
`available on the day of the hearing.
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`PETITIONER:
`
`William B. Raich
`Erin M. Sommers
`Pier D. DeRoo
`Yieyie Yang
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`yieyie.yang@finnegan.com
`
`Sanjay M. Jivraj
`Mark J. Stewart
`ELI LILLY AND COMPANY
`jivraj_sanjay@lilly.com
`stewart_mark@lilly.com
`
`PATENT OWNER:
`
`Deborah A. Sterling
`Robert C. Millonig
`Gaby L. Longsworth
`Jeremiah B. Frueauf
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dsterling-ptab@sternekessler.com
`bobm-ptab@sternekessler.com
`glongs-ptab@sternekessler.com
`jfrueauf-ptab@sternekessler.com
`
`
`
`5
`
`
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