Trials@uspto.gov
`571-272-7822
`
`Paper 58
`Entered: December 29, 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 B21
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN G. NEW,
`SHERIDAN K. SNEDDEN, and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`NEW, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`1 The combined caption is for administrative convenience only and does not
`indicate a joined case or an expanded panel. The parties are not authorized
`to use this caption absent express permission of the Board.
`
`
`571-272-7822
`
`Paper 58
`Entered: December 29, 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 B21
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN G. NEW,
`SHERIDAN K. SNEDDEN, and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`NEW, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`1 The combined caption is for administrative convenience only and does not
`indicate a joined case or an expanded panel. The parties are not authorized
`to use this caption absent express permission of the Board.
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`
`I. ORAL ARGUMENT
`
`
`A. Background
`
`
`We instituted inter partes review on March 19, 2020. Paper 18.2
`
`Prollenium US Inc. (“Petitioner”) and Allergan Industrie, SAS. (“Patent
`
`Owner”) separately request an oral hearing pursuant to 37 C.F.R. § 42.70(a).
`
`See Papers 48, 49, respectively. The requests are granted, with hearing date
`
`set for January 12, 2021. See Paper 19 (“Joint Scheduling Order”).
`
`
`
`B. Time and Format
`
`The hearing will be conducted remotely by video for all participants.
`
`The hearing will commence at 1:00 PM EST, on January 12, 2021. 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 hearing, a party encounters technical or other difficulties that
`
`fundamentally undermine its ability to adequately represent its client, please
`
`let the panel know immediately, and adjustments will be made.3
`
`To facilitate planning, each party must contact PTAB Hearings at
`
`PTABHearings@uspto.gov no later than five (5) business days prior to the
`
`
`2 For purposes of convenience, we use the paper numbers of IPR2019-
`01505, the senior case in this family.
`
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`date of the oral hearing to receive video set-up information. As a reminder,
`
`all arrangements and expenses involved with appearing by video, such as the
`
`selection of the facility 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. Should a party prefer to participate in the
`
`oral hearing telephonically, they should notify PTAB Hearings at the above
`
`email address five (5) business days prior to the hearing to receive dial-in
`
`connection information.
`
`Each party will have a total of two (2) hours to present its case.4
`
`Petitioner bears the ultimate burden of demonstrating that the claims as
`
`challenged in the petition are unpatentable. Thus, Petitioner will open the
`
`hearing by presenting its case regarding the unpatentability of the challenged
`
`claims. Patent Owner will follow with its response to Petitioner’s
`
`presentation. Petitioner may reserve rebuttal time (of no more than half their
`
`total presentation time) to reply to Patent Owner’s arguments. Likewise,
`
`Patent Owner may reserve sur-rebuttal time (of no more than half its total
`
`presentation time) to reply to Petitioner’s rebuttal. See Office Consolidated
`
`Trial Practice Guide, November 2019 Edition, 83, available at
`
`https://www.uspto.gov/TrialPracticeGuideConsolidated (“CTPG”); see also
`
`
`4 The parties’ two-hour presentation time includes all of the captioned
`proceedings. The parties may allocate a portion of their allotted time to the
`motions to exclude evidence.
`
`3
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`84 Fed. Reg. 64,280 (Nov. 21, 2019). A party may only present argument
`
`and evidence at the hearing for which a proper foundation exists in the
`
`record.
`
`Unless ordered otherwise, the parties are to refrain from disclosing
`
`any confidential information during the hearing or including any confidential
`
`information in a demonstrative exhibit.
`
`The parties may request a pre-hearing conference in advance of the
`
`hearing. “The purpose of the pre-hearing conference is to afford the parties
`
`the opportunity to preview (but not argue) the issues to be discussed at the
`
`hearing, and to seek the Board’s guidance as to particular issues that the
`
`panel would like addressed by the parties.” Id. If either party desires a pre-
`
`hearing conference, the parties should jointly contact the Board at
`
`Trials@uspto.gov at least seven (7) business days before the hearing date to
`
`request a conference call for that purpose.
`
`
`
`C. Demonstratives
`
`Demonstratives are not a mechanism for making new arguments.
`
`Demonstratives also are not evidence, and will not be relied upon as
`
`evidence. Rather, demonstratives are visual aids to a party’s oral
`
`presentation regarding arguments and evidence previously presented and
`
`discussed in the papers. Accordingly, demonstratives shall be clearly
`
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`
`4
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`
`regulations to dismiss untimely argument “raised for the first time during
`
`oral argument”). “[N]o new evidence may be presented at the oral
`
`argument.” CTPG 85; see also St. Jude Med., Cardiology Div., Inc. v. The
`
`Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB
`
`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
`
`record but not previously discussed in any paper of record).
`
`Furthermore, because of the strict prohibition against the presentation
`
`of new evidence or arguments at a hearing, it is strongly recommended that
`
`each demonstrative include a citation to a paper in the record, which allows
`
`the Board to easily ascertain whether a given demonstrative contains “new”
`
`argument or evidence or, instead, contains only that which is developed in
`
`the existing record.
`
`Due to the nature of the Board’s consideration of demonstratives and
`
`the opportunity afforded for the parties to reach an agreement without
`
`involving the Board, the Board does not anticipate that objections to
`
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`
`party objects to the propriety of any demonstrative, the parties shall meet
`
`and confer in good faith to resolve any objections to demonstratives prior to
`
`filing the objections with the Board. If such objections cannot be resolved,
`
`the parties may file any objections to demonstratives with the Board no later
`
`than the time of the hearing. The objections shall identify with particularity
`
`which portions of the demonstratives are subject to objection (and should
`
`5
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`include a copy of the objected-to portions) and include a one (1) sentence
`
`statement of the reason for each objection. No argument or further
`
`explanation is permitted. The Board will consider any objections, and may
`
`reserve ruling on the objections.5 Any objection to demonstratives that is
`
`not timely presented will be considered waived.
`
`Finally, the parties are reminded that each presenter should identify
`
`clearly and specifically each paper (e.g., by slide or screen number for a
`
`demonstrative) referenced during the hearing to ensure the clarity and
`
`accuracy of the court reporter’s transcript and for the benefit of all
`
`participants appearing electronically.
`
`
`
`D.
`
`Presenting Counsel
`
`The Board expects lead counsel for each party to be present in person
`
`at the hearing. See CTPG 11. Any counsel of record, however, may present
`
`the party’s argument. If either party expects that its lead counsel will not be
`
`attending the hearing, the parties should initiate a joint conference call with
`
`the Board no later than three (3) business days prior to the hearing to discuss
`
`the matter.
`
`
`
`
`5 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`6
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`E.
`
`Video Hearing Details6
`
`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
`
`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.
`
`The panel will have access to all papers filed with the Board,
`
`including demonstratives. During the oral hearing, the parties are advised to
`
`remain muted and unmute yourself only when speaking, and identify clearly
`
`and specifically each demonstrative (e.g., by slide or screen number), paper,
`
`and exhibit referenced 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.
`
`
`
`
`6 USPTO facilities remain closed to the public. If and when conditions
`allow in-person hearing attendance, the parties will be notified and will be
`permitted to submit a joint request to convert the current video hearing to
`an in-person hearing. The requests will be considered on a case-by-case
`basis, and subject to resource availability.
`
`
`
`7
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`F. Remote Attendance Requests
`
`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 ten (10) business
`
`days prior to the oral hearing date.
`
`
`
`G.
`
`Legal Experience and Advancement Program
`
`The Board has established the “Legal Experience and Advancement
`
`Program,” (“LEAP”) to encourage advocates with less legal experience to
`
`argue before the Board to develop their skills. The Board defines a LEAP
`
`practitioner as a patent agent or attorney having three (3) or fewer
`
`substantive oral arguments in any federal tribunal, including PTAB, and
`
`seven (7) or fewer years of experience as a licensed attorney or agent.7
`
`The parties are encouraged to participate in the Board’s LEAP
`
`program. Either party may request that a qualifying LEAP practitioner
`
`participate in the program and conduct at least a portion of the party’s oral
`
`
`7 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-
`case basis with considerations to include, for example, the amount of time
`that the practitioner argued, the circumstances of the argument, and
`whether the argument concerned the merits or ancillary issues.
`
`8
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`argument. The Board will grant up to fifteen (15) minutes of additional
`
`argument time to that party, depending on the length of the proceeding and
`
`the PTAB’s hearing schedule. A party should submit a request, no later than
`
`at least five (5) business days before the oral hearing, by email to the Board
`
`at PTABHearings@uspto.gov.8
`
`The LEAP practitioner may conduct the entire oral argument or may
`
`share time with other counsel, provided that the LEAP practitioner is offered
`
`a meaningful and substantive opportunity to argue before the Board. The
`
`party has the discretion as to the type and quantity of oral argument that will
`
`be conducted by the LEAP practitioner.9 Moreover, whether the LEAP
`
`practitioner conducts the argument in whole or in part, the Board will permit
`
`more experienced counsel to provide some assistance to the LEAP
`
`practitioner, if necessary, during oral argument, and to clarify any statements
`
`on the record before the conclusion of the oral argument. Importantly, the
`
`Board does not draw any inference about the importance of a particular issue
`
`
`8 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`
`9 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`9
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`or issues, or the merits of the party’s arguments regarding that issue, from
`
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`
`In instances where an advocate does not meet the LEAP eligibility
`
`requirements, either due to the years of experience as a licensed
`
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`
`but nonetheless has a basis for considering themselves to be in the category
`
`of advocates that this program is intended to assist, the Board encourages
`
`argument by such advocates during oral hearings. Even though additional
`
`argument time will not be provided when the advocate does not qualify for
`
`LEAP, a party may share argument time among counsel and the Board will
`
`permit the more experienced counsel to provide some assistance, if
`
`necessary, during oral argument, and to clarify any statements on the record
`
`before the conclusion of the oral argument.
`
`All practitioners appearing before the Board shall demonstrate the
`
`highest professional standards. All practitioners are expected to have a
`
`command of the factual record, the applicable law, and Board procedures, as
`
`well as the authority to commit the party they represent.
`
`
`
`
`
`
`
`10
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`
`It is hereby
`
`II. ORDER
`
`ORDERED that, subject to the procedures set forth above, the parties’
`
`request for an oral hearing is granted; and
`
`FURTHER ORDERED that an oral hearing, conducted in accordance
`
`with the procedures set forth above, shall commence at 1:30 PM ET on
`
`January 12, 2021.
`
`
`
`
`
`
`
`11
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`FOR PETITIONER:
`
`
`
`Christopher L. Curfman
`Warren J. Thomas
`William W. Cutchins
`Anthony J. Zucchero
`MEUNIER CARLIN & CURFMAN LLC
`ccurfman@mcciplaw.com
`wthomas@mcciplaw.com
`wcutchins@mcciplaw.com
`azucchero@mcciplaw.com
`
`
`
`
`
`FOR PATENT OWNER:
`
`
`
`
`Anthony M. Insogna
`Tamera M. Weisser
`S. Christian Platt
`Sarah A. Geers
`Jennifer M. Hartjes
`JONES DAY
`aminsogna@jonesday.com
`tweisser@jonesday.com
`cplatt@jonesday.com
`sgeers@jonesday.com
`jhartjes@jonesday.com
`
`
`
`
`
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
