`571-272-7822
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` Paper 70
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` Entered: December 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC., and PFIZER, INC.
`Petitioner,
`
`v.
`
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner.
`____________
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)1
`____________
`
`
`
`Before HYUN J. JUNG and JAMES A. TARTAL, Administrative Patent
`Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 We exercise our discretion to issue one Order to be entered in each
`proceeding. The parties are not authorized to use this joint heading and
`filing style in their papers. Also, Pfizer Inc., who filed petitions in IPR2019-
`00977, IPR2019-00978, IPR2019-00980, IPR2019-00982, and IPR2019-
`00987, has been joined as a petitioner in these proceedings.
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`
`We instituted inter partes review in the above-referenced proceedings.
`Paper 28.2 The initial Scheduling Order set January 14–15, 2020, as the
`dates for oral argument, if requested. Paper 29. Pursuant to 37 C.F.R.
`§ 42.70, each party filed a request for oral argument. Papers 68, 69. The
`parties each requested that the above-identified proceedings and the
`proceeding for IPR2018-016703 be heard together during a three-hour
`hearing with 90 total minutes allotted for each side on January 14, 2020. Id.
`The requests to conduct the proceedings together during a three-hour
`hearing are granted. The hearing, however, will be conducted on
`January 15, 2020, for scheduling reasons. Also, because the proceedings
`will be heard together, Judges Browne, Jung, Gerstenblith, and Tartal will be
`present for the entirety of the hearing.
`Specifically, the hearing will commence at 1:00 PM Eastern Time,
`on Wednesday, January 15, 2020, and will be conducted at the USPTO
`Central Headquarters in Alexandria, Virginia (the ninth floor of Madison
`Building East, 600 Dulany Street, Alexandria, Virginia, 22314). At least
`one judge may participate in the hearing via videoconference from a remote
`location; counsel for the parties, however, must appear in person. The
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis.
`Each party will have ninety (90) minutes of total oral argument time.
`Petitioner will argue first and may present arguments regarding the
`
`
`2 For purposes of expediency, all citations are to IPR2018-01675 unless
`otherwise noted.
`3 A separate hearing order will be issued for IPR2018-01670, which does not
`include Pfizer, Inc. as a joined party.
`2
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`challenged claims. Patent Owner will then have the opportunity to 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
`rebuttal arguments. No other arguments will be heard.
`The Board will provide a court reporter, and the reporter’s transcript
`will constitute the official record of the hearing. The hearing transcript will
`be entered in the record of this proceeding.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be
`served at least (7) seven business days before the hearing. Demonstrative
`exhibits are visual aids to oral argument and not evidence, and should be
`clearly marked as such. For example, each slide may be marked with the
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`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. Demonstrative exhibits, marked
`as noted above, should be filed in accordance with 37 C.F.R. § 42.70(b) at
`least five (5) business days before the hearing.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if any objections
`cannot be resolved, the unresolved objections must be filed with the Board at
`least (2) two business days before the hearing. Any objection to
`
`3
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`demonstrative exhibits that is not timely presented will be considered
`waived. The objections should identify with particularity which
`demonstratives and portions thereof 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 if the Board deems necessary.
`Otherwise, the Board will rule on the objections at the hearing.
`To aid in the preparation of an accurate transcript, each party shall
`provide a paper copy of any demonstratives to the court reporter on the day
`of the oral argument. Such paper copies shall not become part of the record
`of this proceeding. The parties are reminded that, during the hearing, the
`presenter should identify clearly each demonstrative exhibit (e.g., by slide or
`screen number) to ensure the clarity and accuracy of the reporter’s transcript
`and permit any judge participating from a remote location to follow the
`arguments.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument as long as that counsel is present in person. If either party expects
`that its lead counsel will not be attending the oral argument, the parties
`should initiate a joint telephone conference with the Board no later than two
`(2) business days prior to the oral hearing to discuss the matter.
`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
`
`4
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`in San Jose, California. To request remote video viewing, a party must send
`an email message to Trials@uspto.gov at least 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.
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. A party may also 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. 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.
`Any requests for a pre-hearing conference must be made
`by December 13, 2019. To request such a conference, an email should be
`sent to Trials@uspto.gov including several dates and times of availability for
`all parties that are generally no later than three business days prior to the oral
`hearing and shall include list of issues to be discussed during the conference.
`It is
`ORDERED that, subject to the procedures set forth above, the parties’
`requests for oral hearing are granted; and
`
`5
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`
`FURTHER ORDERED that an oral hearing, conducted in accordance
`with the procedures set forth above, shall commence at 1:00 PM ET on
`January 15, 2020.
`
`
`
`
`
`
`6
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`PETITIONER:
`
`Richard Torczon
`Douglas Carsten
`Wesley Derryberry
`Tasha Thomas
`Lorelei Westin
`Nicole Stafford
`Jeffrey Guise
`Elham Steiner
`Yahn-Lin Chu
`WILSON SONSINI GOODRICH & ROSATI
`rtorczon@wsgr.com
`dcarsten@wsgr.com
`wderryberry@wsgr.com
`tthomas@wsgr.com
`lwestin@wsgr.com
`nstafford@wsgr.com
`jguise@wsgr.com
`esteiner@wsgr.com
`ychu@wsgr.com
`
`
`PATENT OWNER:
`
`Elizabeth Stotland Weiswasser
`William S. Ansley
`Adrian C. Percer
`Brian C. Chang
`Sudip Kundu
`Kathryn Kantha
`Matthew D. Sieger
`Anish Desai
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`sutton.ansley@weil.com
`adrian.percer@weil.com
`brian.chang@weil.com
`
`7
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`sudip.kundu@weil.com
`kathryn.kantha@weil.com
`matthew.sieger@weil.com
`anish.desai@weil.com
`
`W. Karl Renner
`John S. Goetz
`Joshua A. Griswold
`Matthew S. Colvin
`Kenneth W. Darby, Jr.
`FISH & RICHARDSON P.C.
`PTABInbound@fr.com
`
`8
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