`571-272-7822
`
`Paper No. 32
`Entered: April 2, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MODERNA THERAPEUTICS, INC.,
`Petitioner,
`
`v.
`
`ARBUTUS BIOPHARMA CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2019-00554
`Patent 8,058,069 B2
`____________
`
`
`
`Before TINA E. HULSE, CHRISTOPHER G. PAULRAJ, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
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`IPR2019-00554
`Patent 8,058,069 B2
`
`
`Petitioner and Patent Owner request an oral hearing pursuant to
`37 C.F.R. § 42.70 in the above-listed proceeding. Papers 23, 24. The
`requests are granted.
`As requested by the parties, each party will have 45 minutes of total
`argument time to present its arguments. Petitioner bears the ultimate burden
`of proof that the patent claims at issue in these reviews are unpatentable.
`Therefore, Petitioner will open the hearing by presenting arguments
`regarding the pending grounds of unpatentability. Patent Owner will then
`have the opportunity to respond to Petitioner’s arguments. If desired,
`Petitioner may reserve rebuttal time not to exceed half the total time allotted.
`Petitioner is cautioned that rebuttal time may only be used to respond to
`arguments made during Patent Owner’s argument. If Petitioner reserves
`time for rebuttal, Patent Owner may reserve sur-rebuttal time.
`Oral arguments will commence at 1:00 pm EDT on April 22, 2020,
`by video. 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.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.1
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
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`IPR2018-00139
`Patent 8,146,798 B2
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`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 five business days prior to the oral hearing date to receive
`video set-up information. As a reminder, all arrangements and the expenses
`involved with appearing by video, such as the selection of the facility to be
`used from which a party will attend by video, must be borne by that party. If
`a video connection cannot be established, the parties will be provided with
`dial-in connection information, and the oral hearing will be conducted
`telephonically.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above telephone
`number five business days prior to the hearing to receive dial-in connection
`information.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days before the hearing. The parties also shall
`provide the demonstrative exhibits to the Board at least two business days
`prior to the hearing by emailing them to PTABHearings@uspto.gov.
`Despite the requirement in § 42.70(b) for parties to file demonstratives, the
`parties shall not file any demonstrative exhibits in this case without prior
`authorization from the Board.
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. For
`example, each slide of a demonstrative exhibit may be marked with the
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`Demonstrative exhibits cannot 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
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`IPR2018-00139
`Patent 8,146,798 B2
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`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
`first time during oral argument”).
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), regarding the appropriate content of
`demonstrative exhibits. 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
`demonstratives with the Board at least two business days before the hearing.
`The objections should identify with particularity which portions of the
`demonstrative exhibits are subject to objection, include a copy of the
`objected-to portions, and include a one-sentence statement of the reason for
`each objection. No argument or further explanation is permitted. The Board
`will consider any objections and schedule a conference call if deemed
`necessary. Otherwise, the Board will reserve ruling on the objections. Any
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`The Board generally expects lead counsel for each party to be present
`by video at the oral hearing. However, any counsel of record may present
`the party’s argument as long as that counsel is present by video. If either
`party anticipates that its lead counsel will not be present at the oral hearing,
`the parties should initiate a joint telephone conference with the Board no
`later than two business days prior to the oral hearing to discuss the matter.
`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 a video oral hearing, such as a request to
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`IPR2018-00139
`Patent 8,146,798 B2
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`accommodate 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.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the oral hearing, the parties are advised to identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the oral hearing may also result in an audio lag, and so the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`Members of the public may request to listen in on this oral hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov at least five business days
`prior to the oral hearing date.
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`IPR2018-00139
`Patent 8,146,798 B2
`
`PETITIONER:
`
`Michael Fleming
`C. Maclain Wells
`IRELL & MANELLA LLP
`mfleming@irell.com
`mwells@irell.com
`ModernaIPR@irell.com
`
`
`PATENT OWNER:
`
`Michael T. Rosato
`Steven W. Parmelee
`Sonja R. Gerrard
`Lora M. Green
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`sparmelee@wsgr.com
`sgerrard@wsgr.com
`lgreen@wsgr.com
`
`
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