`571-272-7822 Entered: December 19, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ELI LILLY AND COMPANY,
`Petitioner,
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`v.
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`TEVA PHARMACEUTICALS INTERNATIONAL GMBH,
`Patent Owner.
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`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
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`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
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`WORTH, Administrative Patent Judge.
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`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
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`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.
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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)
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`The date set for oral argument in these three proceedings is January 8,
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`2020, if either party requests oral argument and the Board grants the request.
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`IPR2018-01710, Paper 10, 8.2 Both parties have requested oral argument
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`pursuant to 37 C.F.R. § 42.70. Papers 44, 45. Both parties have requested a
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`consolidated argument for the three proceedings, in which each side is
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`allotted 60 minutes for its arguments. Id. The parties’ requests are granted
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`to the extent set forth below.
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`A single combined oral argument for all three cases will commence at
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`1:00 PM Eastern Time, on Wednesday, January 8, 2020 at the USPTO
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`Headquarters on the ninth floor of Madison Building East, 600 Dulany
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`Street, Alexandria, Virginia.3 The hearing will be open to the public for in-
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`person attendance that will be accommodated on a first-come, first-served
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`basis. The parties are directed to contact the Board at least 10 days in
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`advance of the hearing if there are any concerns about disclosing
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`confidential information. The Board will provide a court reporter for the
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`hearing, and the reporter’s transcript will constitute the official record of the
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`hearing. To facilitate planning, each party must send an email message to
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`PTABHearings@uspto.gov five days prior to the hearing if the number
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`2 Where the same or similar papers have been filed in multiple proceedings,
`we refer herein to the papers filed in Case IPR2018-01710.
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`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.
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`2
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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)
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`planning to attend the hearing in-person for its side (attorneys and others)
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`exceeds five people.
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`As there is significant commonality of issues in the three proceedings,
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`we believe that it would be appropriate to have a combined hearing with
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`each party presenting its arguments in all cases in a single argument, and to
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`allocate each party a total of 60 minutes to present arguments. Because
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`Petitioner bears the ultimate burden of proof that the claims at issue are
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`unpatentable, Petitioner will begin the oral argument by presenting its case
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`regarding the challenged claims at issue and any pending motions that it may
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`have filed. Thereafter, Patent Owner will argue its opposition to Petitioner’s
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`case, and can present on its motions to strike and exclude. Petitioner may
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`reserve time to rebut Patent Owner’s opposition and respond to any
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`arguments by Patent Owner regarding its motions to strike and exclude.
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`Finally, Patent Owner may reserve time to present a brief sur-rebuttal to
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`Petitioner’s rebuttal.
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`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be
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`served at least seven (7) business days before the hearing date. The
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`demonstrative exhibits shall be filed with the Board no later than five (5)
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`business days before the hearing date (i.e., no later than January 2, 2020).
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`Demonstrative exhibits are not evidence, but merely a visual aid for use
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`at the hearing, and should be clearly marked as such. For example,
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`each slide of the demonstratives may be marked with the words
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`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
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`Demonstrative exhibits shall not introduce new arguments or
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`evidence. The parties shall meet and confer in good faith to discuss any
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`objections to demonstrative exhibits at least three (3) business days before
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`3
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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)
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`the hearing. If any issues regarding demonstratives remain unresolved after
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`the parties meet and confer, the parties shall jointly file a one-page list of
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`objections to the demonstrative exhibits with the Board at least two (2)
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`business days before the hearing. For each objection, the list must identify
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`with particularity the demonstratives subject to the objection and include a
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`short, one-sentence statement explaining the objection. We will consider the
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`objections and schedule a conference call if necessary. Regardless of
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`whether either party disputes the propriety of any demonstrative exhibit, we
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`consider demonstrative exhibits only to the extent (1) they elucidate the
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`parties’ arguments presented during the hearing and (2) they include only
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`arguments and/or evidence already of record in the proceedings. For further
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`guidance on what constitutes an appropriate demonstrative exhibit, the
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`parties are directed to CBS Interactive Inc. v. Helferich Patent Licensing,
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`LLC, IPR2013-00033, Paper 118 (PTAB Oct. 23, 2013).
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`At least one member of the panel may be attending the hearing
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`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
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`above, and will not be able to view the projection screen in the hearing
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`room. We take this opportunity to remind the parties that each presenter
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`must identify clearly and specifically each demonstrative exhibit (e.g., by
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`slide or screen number) referenced during the hearing to ensure the clarity
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`and accuracy of the reporter’s transcript, and to enable any judge that is
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`attending the hearing from a remote location to follow the presentation.
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`The Board generally expects lead counsel for each party to be present
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`in person at the oral hearing. See Consolidated Trial Practice Guide 11
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`(Nov. 2019), available at
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`4
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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)
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`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. If lead
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`counsel for either party is unable to attend the hearing, the parties shall
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`request a joint telephone conference call no later than two (2) days prior to
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`the hearing date to discuss the matter. Any counsel of record may present
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`the party’s argument as long as lead counsel is present in person.
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`If a party requires a different arrangement, the party should contact
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`the Board as directed below with their request. For example, a party may
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`request that counsel be permitted to present arguments remotely from an
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`alternative USPTO location. The available locations include the USPTO
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`headquarters in Alexandria, Virginia; the Texas Regional Office in Dallas,
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`Texas; the Rocky Mountain Regional Office in Denver, Colorado; the Elijah
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`J. McCoy Midwest Regional Office in Detroit, Michigan; and the Silicon
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`Valley Office in San Jose, CA. To request that counsel be permitted to
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`present arguments from a remote location, a party should send an email
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`message to PTABHearings@uspto.gov at least ten business days or as soon
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`as practical prior to the hearing and provide a short statement of reasons for
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`the request. The Board will notify the parties if the request is approved.
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`Approval of the request does not guarantee that a panel member will be
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`present at the remote location.
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`A party may also request remote video attendance for one or more of
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`its other attendees to view the hearing from any USPTO location. To
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`request remote video viewing, a party must send an email message to
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`PTABHearings@uspto.gov ten business days prior to the hearing, indicating
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`the requested location and the number planning to view the hearing from the
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`remote location. The Board will notify the parties if the request for video
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`5
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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)
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`viewing is granted. Note that it may not be possible to grant the request due
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`to the availability of resources.
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`Any special requests for audio-visual equipment should be directed to
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`PTABHearings@uspto.gov. A party may also indicate any special requests
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`related to appearing at an in-person oral hearing, such as a request to
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`accommodate physical needs that limit mobility or visual or hearing
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`impairments, and indicate how the PTAB may accommodate the special
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`request. Any special requests must be presented in a separate
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`communication not less than five (5) days before the hearing.
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`6
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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)
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`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
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`PATENT OWNER:
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`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
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`7
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