Filed: November 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`PROLLENIUM US INC.,
`Petitioner,
`
`v.
`
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`
`_________________
`
`IPR2019-01505 (Patent 8,450,475)
`IPR2019-01506 (Patent 8,357,795)
`IPR2019-01508 (Patent 9,238,013)
`IPR2019-01509 (Patent 9,358,322)
`IPR2019-01617 (Patent 8,822,676)
`IPR2019-01632 (Patent 8,357,795)
`IPR2020-00084 (Patent 9,089,519)
`
`_________________
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70(a)1
`
`
`1 Authorization for the use of a joint caption page was received on April 27, 2020.
`Neither party opposes the use of a joint caption page. An identical paper has been
`filed in each case recited in the consolidated caption.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`PROLLENIUM US INC.,
`Petitioner,
`
`v.
`
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner.
`
`_________________
`
`IPR2019-01505 (Patent 8,450,475)
`IPR2019-01506 (Patent 8,357,795)
`IPR2019-01508 (Patent 9,238,013)
`IPR2019-01509 (Patent 9,358,322)
`IPR2019-01617 (Patent 8,822,676)
`IPR2019-01632 (Patent 8,357,795)
`IPR2020-00084 (Patent 9,089,519)
`
`_________________
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70(a)1
`
`
`1 Authorization for the use of a joint caption page was received on April 27, 2020.
`Neither party opposes the use of a joint caption page. An identical paper has been
`filed in each case recited in the consolidated caption.
`
`
`
`IPR2019-01505, IPR2019-01506, IPR2019-01508, IPR2019-01509,
`IPR2019-01617, IPR2019-01632, IPR2020-00084
`
`
`In accordance with 37 C.F.R. § 42.70 and the Board’s April 13, 2020,
`
`Scheduling Order, Petitioner Prollenium US Inc. (Prollenium) requests oral
`
`argument in the seven proceedings identified in the joint caption above.
`
`I.
`
`ORAL ARGUMENT CONSOLIDATION AND TIMING
`
`Petitioner and Patent Owner Allergan Industrie, SAS (Allergan) have
`
`conferred about the timing and overall structure of the hearing. Both parties agree a
`
`consolidated hearing addressing all seven matters would be the most efficient way
`
`to address these related proceedings. The Board’s Joint Scheduling Order
`
`previously scheduled oral argument for January 12, 2021, for all seven
`
`proceedings. See IPR2019-01505, Paper 19, 11.
`
`The parties differ on the amount of time to present argument to the Board.
`
`Prollenium requests up to two hours of argument be allocated per party, i.e., four
`
`hours total. While the cases involve six different patents across seven proceedings,
`
`Prollenium believes that, given the substantially overlapping grounds and factual
`
`issues, ninety minutes (or at most two hours) should be sufficient for each side.2
`
`
`2 Prollenium understands that Allergan intends to request a multi-day hearing of
`
`approximately ninety minutes per party, per day (six hours total). Prollenium
`
`believes the time requested is excessive and unnecessary, and that the hearing can
`
`be completed in one day.
`
`1
`
`
`
`IPR2019-01505, IPR2019-01506, IPR2019-01508, IPR2019-01509,
`IPR2019-01617, IPR2019-01632, IPR2020-00084
`
`
`The parties have preliminarily discussed further sub-division of time among
`
`the various grounds. The parties plan to discuss that further and may request a pre-
`
`hearing conference to further discuss organization with the Board and/or address
`
`motions filed after the close of briefing.
`
`II.
`
`ISSUES TO BE ARGUED
`
`Under 37 C.F.R. § 42.20(a), Prollenium requests oral argument on all issues
`
`raised in the parties’ papers, including the instituted Grounds of Unpatentability
`
`presented in the proceedings (as set forth in the sections and tables below), any
`
`motion to exclude that may be filed by Allergan, any issues requested by Allergan,
`
`and any responses to issues that the Board deems necessary for issuing a final
`
`written decision.
`
`A. Obviousness grounds based on combination of Lebreton and
`Sadozai
`
`IPR No.
`
`2019-01505
`
`2019-01506
`2019-01508
`
`2019-01509
`
`2019-01617
`
`2019-01632
`2020-00084
`
`475
`
`795
`013
`
`322
`
`Patent Ground
`1
`2
`3
`1
`1
`1
`2
`1
`2
`2
`4
`
`676
`
`795
`519
`
`Additional References
`Claims
`in Ground
`1-9, 18, 27-37 Monheit
`1-9, 18
`Clark
`27-37
`Smith
`1-11, 22, 40-41 —
`1-4
`Monheit
`1-4
`Monheit
`2
`Smith
`1, 3-31
`CTA Summary
`2
`CTA Summary, Monheit
`26-39
`—
`1-8
`—
`
`2
`
`
`
`IPR2019-01505, IPR2019-01506, IPR2019-01508, IPR2019-01509,
`IPR2019-01617, IPR2019-01632, IPR2020-00084
`
`
`B. Obviousness grounds based on combination of Kinney, Zhao, and
`Narins
`
`IPR No.
`
`2019-01505
`
`2019-01506
`2019-01508
`
`2019-01509
`
`2019-01617
`
`475
`
`795
`013
`
`Patent Ground
`4
`5
`6
`2
`2
`3
`4
`3
`
`322
`
`676
`
`Additional References
`Claims
`in Ground
`1-9, 18, 27-37 Monheit
`1-9, 18
`Clark
`27-37
`Smith
`1, 3-11, 40-41 —
`1-4
`—
`1-4
`Monheit
`2
`Smith
`1-31
`—
`
`
`
`
`
`
`
`C. Obviousness grounds based on combination of Reinmuller and
`Lebreton
`
`IPR No.
`2019-01506
`2019-01508
`
`2019-01509
`
`Patent Ground
`795
`3
`013
`3
`5
`6
`
`322
`
`Additional References
`in Ground
`
`Claims
`1, 3-11, 40-41 —
`1-4
`Monheit
`1-4
`Monheit
`2
`Smith
`
`D. Other petitioned grounds of unpatentability
`
`IPR No.
`2019-01632
`
`2020-00084
`
`Patent Ground Claims
`795
`1
`26-39
`1
`1-4
`2
`1-4
`3
`1-4
`5
`1-8
`
`519
`
`Asserted References
`Basis
`CTA Summary
`103
`102(a)(1) PMA P050047/S005
`102(a)(1) Weinkle
`102(a)(1) U.S. 2010/0028438
`103
`PMA P050047, Kinney
`
`3
`
`
`
`IPR2019-01505, IPR2019-01506, IPR2019-01508, IPR2019-01509,
`IPR2019-01617, IPR2019-01632, IPR2020-00084
`
`
`Respectfully submitted,
`
`
`/Warren Thomas/
`Warren J. Thomas (Reg. No. 70,581)
`
`4
`
`
`
`IPR2019-01505, IPR2019-01506, IPR2019-01508, IPR2019-01509,
`IPR2019-01617, IPR2019-01632, IPR2020-00084
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and consent of the Patent Owner, I certify
`that on November 17, 2020, a copy of Petitioner’s Request for Oral Argument
`Under 37 C.F.R. § 42.70(a) was served on the counsel of record by email to:
`aminsogna@jonesday.com
`tweisser@jonesday.com
`cplatt@jonesday.com
`sgeers@jonesday.com
`jhartjes@jonesday.com
`
`
`
`
`/Warren Thomas/
`Warren J. Thomas (Reg. No. 70,581)
`
`5
`
`
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