`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
`
`