Trials@uspto.gov Paper 54
`571-272-7822 Entered: December 19, 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 IPR2018-01710 (Patent 8,586,045 B2)
`Case IPR2018-01711 (Patent 9,884,907 B2)
` Case IPR2018-01712 (Patent 9,884,908 B2)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
`
`
`
`
`1 The proceedings have not been consolidated. The parties are not
`authorized to use a combined caption unless an identical paper is being
`entered into each proceeding, and the paper contains a footnote indicating
`the same.
`
`
`571-272-7822 Entered: December 19, 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 IPR2018-01710 (Patent 8,586,045 B2)
`Case IPR2018-01711 (Patent 9,884,907 B2)
` Case IPR2018-01712 (Patent 9,884,908 B2)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
`
`
`
`
`1 The proceedings have not been consolidated. The parties are not
`authorized to use a combined caption unless an identical paper is being
`entered into each proceeding, and the paper contains a footnote indicating
`the same.
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`
`The date set for oral argument in these three proceedings is January 8,
`
`2020, if either party requests oral argument and the Board grants the request.
`
`IPR2018-01710, Paper 10, 8.2 Both parties have requested oral argument
`
`pursuant to 37 C.F.R. § 42.70. Papers 44, 45. Both parties have requested a
`
`consolidated argument for the three 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 three cases will commence at
`
`1:00 PM Eastern Time, on Wednesday, January 8, 2020 at the USPTO
`
`Headquarters on the ninth floor of Madison Building East, 600 Dulany
`
`Street, Alexandria, Virginia.3 The hearing will be open to the public for in-
`
`person attendance that will be accommodated on a first-come, first-served
`
`basis. The parties are directed to contact the Board at least 10 days in
`
`advance of the hearing if there are any concerns about disclosing
`
`confidential information. The Board will provide a court reporter for the
`
`hearing, and the reporter’s transcript will constitute the official record of the
`
`hearing. To facilitate planning, each party must send an email message to
`
`PTABHearings@uspto.gov five days prior to the hearing if the number
`
`
`2 Where the same or similar papers have been filed in multiple proceedings,
`we refer herein to the papers filed in Case IPR2018-01710.
`
`3 We acknowledge Patent Owner’s pending Request for Rehearing with
`respect to the request for a stay of this proceeding, and the request that the
`Precedential Opinion Panel review the same. See Papers 49, 50; Ex. 3002.
`The Precedential Opinion Panel has not yet issued any decision on this
`question. Unless something changes in this regard, the hearing will proceed
`as scheduled.
`
`2
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`planning to attend the hearing in-person for its side (attorneys and others)
`
`exceeds five people.
`
`As there is significant commonality of issues in the three 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
`
`reserve time to rebut Patent Owner’s opposition and respond to any
`
`arguments by Patent Owner regarding its motions to strike and exclude.
`
`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 January 2, 2020).
`
`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
`
`3
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`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
`
`parties are directed to CBS Interactive Inc. v. Helferich Patent Licensing,
`
`LLC, IPR2013-00033, Paper 118 (PTAB Oct. 23, 2013).
`
`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
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`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.
`
`The Board generally expects lead counsel for each party to be present
`
`in person at the oral hearing. See Consolidated Trial Practice Guide 11
`
`(Nov. 2019), available at
`
`4
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. 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. Any counsel of record may present
`
`the party’s argument as long as lead counsel is present in person.
`
`If a party requires a different arrangement, the party should contact
`
`the Board as directed below with their request. For example, a party may
`
`request that counsel be permitted to present arguments remotely from an
`
`alternative USPTO location. The available locations include the USPTO
`
`headquarters in Alexandria, Virginia; 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 that counsel be permitted to
`
`present arguments from a remote location, a party should send an email
`
`message to PTABHearings@uspto.gov at least ten business days or as soon
`
`as practical prior to the hearing and provide a short statement of reasons for
`
`the request. The Board will notify the parties if the request is approved.
`
`Approval of the request does not guarantee that a panel member will be
`
`present at the remote location.
`
`A party may also request remote video attendance for one or more of
`
`its other attendees to view the hearing from any USPTO location. To
`
`request remote video viewing, a party must send an email message to
`
`PTABHearings@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
`
`5
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`
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`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`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
`
`PTABHearings@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.
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`6
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`
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`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`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
`
`7
`
`
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