`571-272-7822
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`Paper: 28
`Entered: December 2, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
`
`v.
`
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`____________
`
`
`
`IPR2020-01602
`Patent 9,901,123 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
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`IPR2020-01602
`Patent 9,901,123 B2
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`I. ORAL ARGUMENT
`Philip Morris Products, S.A. (“Petitioner”) and RAI Strategic
`Holdings, Inc. (“Patent Owner”) each requested oral argument pursuant to
`37 C.F.R. § 42.70(a). Papers 26, 27. Petitioner’s and Patent Owner’s
`requests are granted subject to the procedures set forth below.
`A. Time and Format
`Oral arguments will commence at 10:00 am Eastern Time on
`January 6, 2022 by video. The Board will provide a court reporter for the
`hearing, and the reporter’s transcript will constitute the official record of the
`hearing.
`Each party will have a total of sixty (60) minutes of argument time.
`Petitioner will open the hearing by presenting its case regarding the
`challenged claims for which the Board instituted trial. Thereafter, Patent
`Owner will respond to Petitioner’s argument. Petitioner may reserve
`rebuttal time to respond to arguments presented by Patent Owner. In
`accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in
`November 2019, Patent Owner may request to reserve time for a brief sur-
`rebuttal. See CTPG 83.
`The parties may request a pre-hearing conference by December 17,
`2021, as set forth in the Scheduling Order. Paper 10, 12; CTPG 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.” CTPG 82. If either party desires a pre-hearing
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`conference, an email should be sent to Trials@uspto.gov including several
`dates and times of availability for one or both parties, as appropriate, that are
`generally no later than three business days prior to the oral hearing. We
`direct the parties to the CTPG for more information on the pre-hearing
`conference.
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), any demonstratives shall be
`served on opposing counsel at least seven (7) business days before the
`hearing date and filed with the Board, as a separate Exhibit in accordance
`with 37 C.F.R. § 42.63, at least one (1) business day before the hearing
`date. 2 The parties should consider the information regarding demonstrative
`materials discussed in the CTPG.
`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
`
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`2 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 ten (10) business days before the
`hearing date.
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`3
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`Patent 9,901,123 B2
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`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 at least
`two (2) business days before the hearing. The objections shall: identify with
`particularity which portions of the demonstratives 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 may
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`reserve ruling on the objections. 3 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.
`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.
`D. Video Hearing Details4
`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
`will be provided with dial-in connection information, and the hearing will be
`conducted telephonically.
`
`
`3 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`4 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.
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`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 only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, 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. 5
`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.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`
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`5 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
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`6
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`Board at PTABHearings@uspto.gov at least five (5) 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. 6
`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
`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
`
`6 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.
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`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov. 7
`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. 8 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.
`In instances where an advocate does not meet the definition of a
`LEAP practitioner 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
`
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`7 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.
`8 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.
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`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.
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall commence at
`10:00 am Eastern Time on January 6, 2022, by video, and proceed in the
`manner set forth herein.
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`9
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`IPR2020-01602
`Patent 9,901,123 B2
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`FOR PETITIONER:
`Jonathan M. Strang
`Matthew J. Moore
`Lawrence J. Gotts
`Clement Naples
`Gregory Sobolski
`Dale Chang
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`matthew.moore@lw.com
`lawrence.gotts@lw.com
`clement.naples@lw.com
`greg.sobolski@lw.com
`dale.chang@lw.com
`
`FOR PATENT OWNER:
`David M. Maiorana
`Anthony M. Insogna
`Geoffrey K. Gavin
`Kenneth S. Luchesi
`Joshua R. Nightingale
`David B. Cochran
`
`JONES DAY
`dmaiorana@jonesday.com
`aminsogna@jonesday.com
`ggavin@jonesday.com
`kluchesi@jonesday.com
`jrnightingale@jonesday.com
`dcochran@jonesday.com
`
`
`
`10
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