Trials@uspto.gov
`571.272.7822
`
` Paper No. 33
`
` Entered: October 22, 2019
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`NEPTUNE GENERICS LLC
`Petitioner,
`
`v.
`
`CORCEPT THERAPEUTICS, INC
`Patent Owner.
`____________
`
`Case IPR2018-01494
`Patent 8,921,348 B2
`____________
`
`
`Before TINA E. HULSE, ROBERT A. POLLOCK and DAVID COTTA,
`Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`571.272.7822
`
` Paper No. 33
`
` Entered: October 22, 2019
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`NEPTUNE GENERICS LLC
`Petitioner,
`
`v.
`
`CORCEPT THERAPEUTICS, INC
`Patent Owner.
`____________
`
`Case IPR2018-01494
`Patent 8,921,348 B2
`____________
`
`
`Before TINA E. HULSE, ROBERT A. POLLOCK and DAVID COTTA,
`Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`IPR2018-01494
`Patent 8,921,348 B2
`
`
`Pursuant to 37 C.F.R. § 42.70 and the Board’s Scheduling Order
`(Paper 12), Neptune Generics LLC (“Petitioner”) and Corcept Therapeutics,
`Inc. (“Patent Owner”) have each requested an oral hearing for the above-
`captioned proceeding. Paper 31, 1; Paper 32, 1. The requests for oral
`argument are granted, subject to the terms and conditions set forth below.
`Oral arguments will commence at 1:00 PM Eastern Time on November 19,
`2019, on the 9th floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia.
`The Board ordinarily provides an hour of argument per side for a
`single proceeding. See Trial Practice Guide Update (Aug. 2018), 19.
`Petitioner requests that it be given sixty (60) minutes to present its
`arguments. Paper 32, 2. Patent Owner requests that it be given ninety (90)
`minutes, but offers no explanation for why it needs an additional 30 minutes
`of oral argument. Paper 31, 1. Given that the hearing is for a single
`proceeding regarding seven claims, we see no reason to deviate from the
`standard one hour of argument. Thus, each party will have sixty (60)
`minutes of total time to present their arguments. Petitioner bears the
`ultimate burden of proof to show that the patent claims at issue are
`unpatentable. Therefore, Petitioner will open the hearing by presenting its
`case regarding the challenged claims for which we instituted trial. Petitioner
`may reserve some of its argument time for rebuttal. Patent Owner will then
`respond to Petitioner’s arguments. Next, Petitioner may use any time it has
`reserved for rebuttal to respond to Patent Owner’s arguments. Lastly, Patent
`Owner may use any time it has reserved for sur-rebuttal to respond to
`Petitioner’s arguments made during rebuttal.
`
`2
`
`
`
`IPR2018-01494
`Patent 8,921,348 B2
`
`
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript shall constitute the official record of the hearing. The
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. The record does not
`contain information designated as confidential. Accordingly, neither party is
`authorized to disclose confidential information during the hearing, which
`shall remain open to the public for its duration.
`Demonstrative exhibits are not evidence sufficient to prove underlying
`facts, but, rather, serve as visual aids to facilitate the presentation of
`argument at an oral hearing. See Duncan v. Dep’t of the Air Force, 674 F.3d
`1359, 1363 (Fed. Cir. 2012) (discussing the nature and proper purpose of
`demonstrative exhibits). Demonstrative exhibits must not include new
`evidence and each must include citations to the record sufficient to establish
`that the exhibit contains no new argument or evidence not already of record
`in the proceeding(s) in which it is offered. The parties are directed to serve
`demonstrative exhibits on opposing counsel at least five (5) business days
`before the hearing date. The parties shall also provide a courtesy copy of
`any demonstrative exhibits to the Board at least three (3) business days prior
`to the hearing by emailing them to Trials@uspto.gov. The parties shall not
`file demonstrative exhibits in the record of these proceedings. Each
`party shall provide a hard copy of its demonstrative exhibits to the court
`reporter at the hearing.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if such objections
`cannot be resolved, the parties may file any objections to demonstrative
`exhibits with the Board at least three (3) business days before the hearing.
`
`3
`
`
`
`IPR2018-01494
`Patent 8,921,348 B2
`
`Any objection to demonstrative exhibits that is not timely presented will be
`considered waived. The objections should identify with particularity which
`demonstratives are subject to objection and include a short (one sentence or
`less) statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider the objections and
`schedule a conference call if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until the oral argument. 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 parties should be prepared for the possibility that at least one
`member of the panel may attend the hearing electronically from a remote
`location and may not be able to view the projection screen in the hearing
`room. Any demonstrative exhibit that cannot made available or visible to
`the judge(s) presiding remotely should not be presented during the hearing.
`Counsel 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) presiding over the hearing remotely.
`The Board expects lead counsel for each party to be present in person.
`However, any counsel of record may present the party’s argument. If either
`party expects that its lead counsel will not attend the hearing, the parties
`should initiate a joint telephone conference with the Board no later than
`two (2) business days prior to the date of the hearing to discuss the matter.
`
`4
`
`
`
`IPR2018-01494
`Patent 8,921,348 B2
`
`
`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 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
`request for video viewing is granted. Note that it may not be possible to
`grant the request due to the availability of resources.
`Both parties request permission to use certain audio/visual equipment
`to display exhibits during the oral hearing. Paper 31, 1; Paper 32, 3. Those
`requests, and any other special requests for audiovisual equipment, should
`be directed to Trials@uspto.gov. Requests for special equipment will not be
`honored unless presented in a separate communication not less than five
`days (5) before the hearing, directed to the above email address.
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01494
`Patent 8,921,348 B2
`
`
`PETITIONER:
`Kenneth Goldman
`Christopher L. May
`Leonard A. Gail
`MASSEY & GAIL LLP
`kgoldman@masseygail.com
`cmay@masseygail.com
`lgail@masseygail.com
`
`PATENT OWNER:
`Robert Steinberg
`David P. Frazier
`Michelle L. Ernst
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`david.frazier@lw.com
`michelle.ernst@lw.com
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
