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` Paper: 24
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`
`
` Entered: October 15, 2019
`
`Trials@uspto.gov
`571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JUBILANT DRAXIMAGE INC.,
`Petitioner,
`
`v.
`
`BRACCO DIAGNOSTICS INC.,
`Patent Owner.
`____________
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
` IPR2018-01450 (Patent 9,299,468 B2)1
`____________
`
`
`Before HYUN J. JUNG, GEORGE R. HOSKINS, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 The parties are not authorized to use a caption identifying multiple
`proceedings.
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`
`We instituted inter partes reviews in IPR2018-01448, IPR2018-
`01449, and IPR2018-01450 on February 8, 2019. Paper 72 (“Decision to
`Institute”). A second Scheduling Order issued in each proceeding set the
`date for oral hearing to October 29, 2019, if hearing is requested by the
`parties and granted by the Board. Paper 20 (“ORDER Changing Due Dates
`6 and 7”). The parties requested oral argument pursuant to 37 C.F.R.
`§ 42.70 in the above-captioned proceedings. Papers 22, 23. The parties’
`requests are granted according to the terms set forth in this Order.
`The oral hearings for the above-captioned proceedings will be
`combined, and the combined oral hearing will commence at 1 PM Eastern
`Time on Tuesday, October 29, 2019, in Hearing Room B on the ninth floor
`of Madison Building East, 600 Dulany Street, Alexandria, Virginia 22314.
`The hearing will be open to the public for in-person attendance, and
`in-person attendance will be accommodated on a first-come, first-served
`basis. Please be advised, available seating is limited. The Board will
`provide a court reporter for the hearing, and the reporter’s transcript will
`constitute the official record of the hearing.
`Patent Owner proposes that each party be allocated one hour of total
`argument time to present its arguments in the above-captioned proceedings.
`Paper 23, 1. Petitioner similarly proposes that each party be allocated one
`hour of total argument time to present its arguments in the above-captioned
`proceedings. Paper 22, 1. We allocate each party one (1) hour of total
`
`
`2 For convenience, we cite to papers in IPR2018-01448. For each of the
`papers discussed herein, similar papers were filed in IPR2018-01449 and
`IPR2018-01450.
`
`
`
`
`2
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`argument time to present its arguments in the above-captioned proceedings.
`The parties may use their one hour to present their arguments as they see fit.
`If the panel requires a lengthy examination of a party’s argument, the panel
`may extend argument time. If the panel extends argument time for one
`party, the panel will extend argument time for the other party by an equal
`amount.
`Petitioner bears the ultimate burden of proof that the claims at issue in
`these reviews are unpatentable. Therefore, at oral hearing, Petitioner will
`proceed first to present its arguments with regard to the challenged claims
`and grounds on which basis we instituted trial in the above-captioned
`proceedings. Petitioner may reserve some (but not more than half) of its
`allotted argument time for rebuttal to respond to Patent Owner’s arguments.
`After Petitioner’s initial presentation, Patent Owner will argue its
`opposition to Petitioner’s case. Thereafter, Petitioner may use any reserved
`time to respond to Patent Owner’s presentation. Patent Owner may reserve
`some (but no more than half) of its allotted argument time for use in sur-
`rebuttal if it so chooses, and may use its reserved time for sur-rebuttal to
`respond to Petitioner’s arguments.3 The parties are reminded that arguments
`made during rebuttal and sur-rebuttal periods must be responsive to
`arguments the opposing party made in its immediately preceding
`presentation. The parties are also reminded that during the hearing, the
`
`
`3 See Trial Practice Guide August 2018 Update, p. 20, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf (providing that the “Board may also permit patent owners the
`opportunity to present a brief sur-rebuttal if requested”).
`
`3
`
`
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`parties “may only present arguments relied upon in the papers previously
`submitted.” Trial Practice Guide August 2018 Update, p. 23.
`Under 37 C.F.R. § 42.70(b), each party’s demonstrative exhibits must
`be served on opposing counsel at least seven (7) business days before the
`hearing. 37 C.F.R. § 42.70(b). The parties also shall file a courtesy copy of
`the demonstratives as an exhibit to the Board at least three (3) business days
`prior to the hearing by emailing them to Trials@uspto.gov. In addition, the
`parties shall file any demonstrative exhibits in above-captioned proceedings
`within two (2) days of the hearing. Each party shall provide a hard copy of
`its demonstratives to the court reporter at the hearing. The parties are
`reminded that demonstrative exhibits are visual aids to oral argument and
`not evidence and are intended only to assist the parties in presenting their
`oral argument to the panel. Each slide may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. 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) (Order) for guidance regarding the appropriate
`content of demonstrative exhibits. Demonstrative exhibits may not be used
`to advance arguments or introduce evidence not previously presented in the
`record. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir.
`2018) (noting that the “Board was obligated to dismiss [the petitioner’s]
`untimely argument . . . raised for the first time during oral argument”).
`Instead, demonstrative exhibits should cite to the briefs and evidence in the
`record.
`
`
`
`
`
`4
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`
`The parties shall meet and confer to discuss any objections to
`demonstrative exhibits. If any issues regarding demonstratives remain
`unresolved after the parties meet and confer, the parties shall file jointly (by
`email to Trials@uspto.gov) a one-page list of objections to the
`demonstrative exhibits at least three (3) business days before the hearing if
`no pre-hearing conference is requested. 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. The panel
`will consider the objections and may schedule a conference call if deemed
`necessary. Otherwise, rulings on the objections will be reserved until the
`hearing or after the hearing. Any objection to demonstrative exhibits not
`presented timely will be considered waived.
`During the oral hearing, 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 to assist Judge Hoskins, who will join the hearing
`remotely. Judge Hoskins will be unable to view images projected in the
`hearing room. Similarly, to ensure presenters may be heard by Judge
`Hoskins, the parties are reminded to speak only when standing at the hearing
`room podium and toward the attached microphone. The parties should note
`that if a demonstrative is not filed or otherwise made fully available or
`visible to the judge presiding over the hearing remotely, that demonstrative
`will not be considered. If the parties have questions as to whether
`demonstrative exhibits would be sufficiently visible and available to all of
`the judges, the parties are invited to contact the Board at 571-272-9797.
`
`5
`
`
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. Lead or backup counsel, however, may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the hearing, that party should initiate a joint telephone conference
`with the other party and the panel no later than three (3) business days prior
`to the hearing to discuss the matter. No live testimony from any witness will
`be taken at the oral argument.
`There is a strong public policy interest in making all information
`presented in above-captioned proceedings public, as the review determines
`the patentability of claims in an issued patent and thus, affects the rights of
`the public. This policy is reflected in part, for example, in 35 U.S.C.
`§ 316(a)(1) and 35 U.S.C. § 326(a)(1) which provide that the file of any
`inter partes review or post grant review be made available to the public,
`except that any petition or document filed with the intent that it be sealed
`shall, if accompanied by a motion to seal, be treated as sealed pending the
`outcome of the ruling on the motion.
`Per the recent update to the Office Patent Trial Practice Guide, either
`party may request a pre-hearing conference (Office Patent Trial Practice
`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
`the following link to the USPTO website: https://go.usa.gov/xU7GP)). The
`prehearing call is not required, and absent a request, no call will be held.
`Hearing rooms are equipped with projectors for PowerPoint
`presentations, and the parties may request the use of audio-visual equipment
`during the oral hearing. Such requests should be directed to
`Trials@uspto.gov at least five (5) business days in advance of the hearing
`
`6
`
`
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`date. If the request is not received timely, the equipment may not be
`available on the day of the hearing.
`A party should advise the Board as soon as possible before an oral
`argument of any special needs. Any special requests for audio-visual
`equipment should be directed to Trials@uspto.gov. Examples of such needs
`include additional space for a wheelchair, an easel for posters, or an
`overhead projector (“Elmo”). A party may indicate any special requests
`related to appearing at an in-person oral hearing, such as a request to
`accommodate physical needs that limit mobility or visual or hearing
`impairments, and indicate how the PTAB may accommodate the special
`request. Parties should not make assumptions about the equipment the
`Board may have on hand. Any special requests must be presented in a
`separate communication not less than five (5) days before the hearing. If the
`request is not received timely, the equipment may not be available on the
`day of the hearing.
`A party may request remote video attendance for one or more of its
`other attendees to view the hearing from any USPTO location. The
`available locations include the Texas Regional Office in Dallas, Texas; the
`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`in San Jose, CA. To request remote video viewing, a party must send an
`email message to Trials@uspto.gov ten (10) business days prior to the
`hearing, indicating the requested location and the number planning to view
`the hearing from the remote location. The Board will notify the parties if the
`
`
`
`
`
`7
`
`
`
`IPR2018-01448 (Patent 9,299,468 B2)
`IPR2018-01449 (Patent 9,299,467 B2)
`IPR2018-01450 (Patent 9,299,468 B2)
`
`request for video viewing is granted. Note that it may not be possible to
`grant the request due to the availability of resources.
`Accordingly, it is
`ORDERED that the oral arguments for IPR2018-01448, IPR2018-
`01449, and IPR2018-01450 shall take place on Tuesday, October 29, 2019,
`in Hearing Room B on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia, commencing at 1 PM Eastern Time; and
`FURTHER ORDERED that the parties should note that arguments
`made at oral hearing shall have application only in proceeding(s) the record
`of which supports the argument.
`
`For PETITIONER:
`
`Robert Hails
`T. Cy Walker
`Theresa Weisenberger
`BAKERHOSTETLER
`rhails@bakerlaw.com
`cwalker@bakerlaw.com
`tweisenberger@bakerlaw.com
`
`
`For PATENT OWNER:
`
`Barry Schindler
`Heath Briggs
`Lennie Bersh
`GREENBERG TRAURIG, LLP
`SchindlerB@gtlaw.com
`BriggsH@gtlaw.com
`BershL@gtlaw.com
`
`
`
`
`
`8
`
`
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