`571.272.7822
`
`
`Paper 50
`Date: November 22, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEW WORLD MEDICAL, INC.,
`Petitioner,
`
`v.
`
`MICROSURGICAL TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
` IPR2021-00066, Patent 9,999,544 B21
`____________
`
`Before JAMES A. TARTAL, JAMES A. WORTH,
`ROBERT A. POLLOCK, RYAN H. FLAX, and
`DEVON ZASTROW NEWMAN Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`ORDER
`Granting Request for Final Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 Because this Order applies to each of these related inter partes review
`proceedings, we use this caption for efficiency. The parties are not
`authorized to follow this practice, but may request such authorization.
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`New World Medical, Inc. (“Petitioner”) filed a Petition for an inter
`
`partes review in: IPR2020-01573 challenging claims of Patent
`
`9,107,729 B2; IPR2020-01711 challenging claims of Patent 9,358,155 B2;
`
`IPR2021-00017 challenging claims of Patent 9,820,885 B2; IPR2021-00065
`
`challenging claims of Patent 10,123,905 B2; and IPR2021-00066
`
`challenging claims of Patent 9,999,544 B2. See, e.g., Paper 1 of IPR2020-
`
`01573; see also respective Petitions of other noted proceedings.2
`
`MicroSurgical Technology, Inc. (“Patent Owner”) is the Patent Owner in
`
`each of these proceedings. Trial has been instituted in each of these inter
`
`partes review proceedings. See, e.g., Paper 22 in IPR2020-01573.
`
`The parties each request a final oral argument in the aforementioned,
`
`related proceedings. Papers 47, 48. Further, the parties indicate that
`
`“[c]ounsel for Patent Owner conferred with counsel for Petitioner in advance
`
`of filing [each] Request and the Parties agree to one hour per side for all five
`
`related Inter Partes Review proceedings.” See, e.g. Paper 47, 1.
`
`A.
`
`TIME AND FORMAT
`
`The final hearing will be conducted remotely for all participants. The
`
`oral hearing will commence at 10:00 AM Eastern Time on January 10,
`
`2022, by video.3 See Paper 27 (revising Scheduling Order). The parties are
`
`directed to contact the Board at least ten (10) days in advance of the hearing
`
`
`2 For efficiency, we cite to the record from IPR2020-01573; the records in
`the related proceedings are similar.
`3 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`
`2
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`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.
`
`The parties have agreed to and requested an hour of oral argument
`
`each for all of the above-captioned proceedings, collectively, therefore, each
`
`party will have 60 minutes of total time to present arguments in the above-
`
`identified proceedings. Petitioner will proceed first to present its case with
`
`regard to the challenged claims and grounds set forth in the Petitions.
`
`Thereafter, Patent Owner may respond to Petitioner’s case. Petitioner may
`
`reserve up to 15 minutes for rebuttal regarding Patent Owner’s opening
`
`arguments. See Consolidated Trial Practice Guide4 (“CTPG”). Patent
`
`Owner may also reserve up to 15 minutes to use for sur-rebuttal, to respond
`
`to Petitioner’s rebuttal arguments. Id. The parties are reminded that
`
`arguments made during rebuttal and sur-rebuttal periods must be responsive
`
`to arguments the opposing party made in its immediately preceding
`
`presentation.
`
`The parties may request a pre-hearing conference in advance of the
`
`hearing. See Id. at 82. “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
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`
`to request a conference call for that purpose.
`
`B. DEMONSTRATIVES
`
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`
`opposing counsel at least seven (7) business days before the hearing date and
`
`filed no later than five (5) days prior to the hearing.5
`
`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,
`
`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).
`
`
`5 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request that the Board modify the schedule for filing
`and serving demonstratives at least seven (7) business days before the
`hearing date.
`
`4
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`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 (and evidentiary exhibit) 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
`
`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.6 Any objection to demonstratives that is not timely presented
`
`will be considered waived.
`
`
`6 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`5
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`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, paper and page number for briefing, and exhibit number and
`
`page for evidence) 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.
`
`C.
`
`PRESENTING COUNSEL
`
`The Board generally expects lead counsel for each party to be present
`
`at the hearing. See CTPG 11. Any counsel of record may present the
`
`party’s argument as long as that counsel is present by video. See also infra
`
`Section G regarding the Board’s special program for less experienced
`
`practitioners.
`
`D. VIDEO HEARING DETAILS7
`
`To facilitate planning, each party must contact the Board at
`
`PTABHearings@uspto.gov at least five (5) business days prior to the
`
`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 from which a party will attend by video, must be
`
`borne by that party. If a video connection cannot be established, the parties
`
`
`7 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.
`
`6
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`will be provided with dial-in connection information, and the hearing will be
`
`conducted telephonically.
`
`If one or both parties would prefer to participate in the hearing
`
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`
`least five (5) business days prior to the hearing date to receive dial-in
`
`connection information.
`
`Counsel should unmute themselves only when speaking. The panel
`
`will have access to all papers filed with the Board, including demonstratives.
`
`In addition to identifying clearly and specifically each paper referenced
`
`during oral argument to ensure the clarity and accuracy of the court
`
`reporter’s transcript and for the benefit of all participants appearing
`
`electronically, the parties are advised to identify themselves each time they
`
`speak. Furthermore, although unusual, the remote nature of the hearing may
`
`also result in an audio lag, and thus the parties are advised to observe a
`
`pause prior to speaking, so as to avoid speaking over others.
`
`If at any time during the hearing, counsel encounters technical or
`
`other difficulties that fundamentally undermine counsel’s ability to
`
`adequately represent its client, please let the panel know immediately, and
`
`adjustments will be made.8
`
`E.
`
`REMOTE ATTENDANCE REQUESTS
`
`Members of the public may request to listen to this hearing. If
`
`resources are available, the Board generally expects to grant such requests.
`
`
`8 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`7
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`If either party objects to the Board granting such requests, for example,
`
`because confidential information may be discussed, the party must notify the
`
`Board at PTABHearings@uspto.gov at least ten (10) business days prior to
`
`the hearing date.
`
`F.
`
`AUDIO/VISUAL EQUIPMENT REQUESTS
`
`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 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 at least five (5) business days before the hearing
`
`date.
`
`G.
`
`LEGAL EXPERIENCE AND ADVANCEMENT PROGRAM
`
`The Board has established the “Legal Experience and Advancement
`
`Program,” or “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.9
`
`The parties are encouraged to participate in the Board’s LEAP
`
`program. Either party may request that a qualifying LEAP practitioner
`
`
`9 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
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`participate in the program and conduct at least a portion of the party’s oral
`
`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.10
`
`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.11 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
`
`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.
`
`
`10 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.
`11 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
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`In instances where an advocate does not meet the LEAP eligibility
`
`requirements due to 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.
`
`
`
`Accordingly, it is hereby:
`
`ORDER
`
`ORDERED that, in accordance with the above, oral argument will
`
`commence at 10:00 AM Eastern Time on January 10, 2022.
`
`
`
`
`
`
`
`10
`
`
`
`IPR2020-01573, Patent 9,107,729 B2
`IPR2020-01711, Patent 9,358,155 B2
`IPR2021-00017, Patent 9,820,885 B2
`IPR2021-00065, Patent 10,123,905 B2
`IPR2021-00066, Patent 9,999,544 B2
`
`
`For PETITIONER:
`
`Todd R. Tucker
`Kyle T. Deighan
`CALFEE, HALTER & GRISWOLD LLP
`ttucker@calfee.com
`kdeighan@calfee.com
`ipdocket@calfee.com
`
`
`For PATENT OWNER:
`
`Lawrence M. Sung
`Mary Sylvia
`Teresa Summers
`WILEY REIN LLP
`lsung@wiley.law
`msylvia@wiley.law
`tsummers@wiley.law
`
`
`11
`
`