`Tel: 571-272-7822
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` Paper 78
`Entered: July 15, 2022
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`MYLAN PHARMACEUTICALS INC., CELLTRION, INC., and APOTEX,
`INC.,
`Petitioner,
`
`v.
`
`REGENERON PHARMACEUTICALS, INC.,
`Patent Owner.
`
`
`
`
`
`
` IPR2021-00880 (Patent 9,669,069 B2)1
` IPR2021-00881 (Patent 9,254,338 B2)2
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER3
`Granting Requests for Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 IPR2022-00257 and IPR2022-00301 have been joined with this
`proceeding.
`2 IPR2022-00258 and IPR2022-00298 have been joined with this
`proceeding.
`3 The combined caption is for administrative convenience only and does not
`indicate that IPR2021-00880 and IPR2021-00881 have been joined
`together. The parties are not authorized to use this caption without express
`permission of the Board.
`
`
`
`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
`
`
`We instituted inter partes review on November 10, 2021. Paper 21.4
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`Mylan Pharmaceuticals Inc. (“Petitioner”) and Regeneron Pharmaceuticals,
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`Inc. (“Patent Owner”) have separately requested an in-person oral hearing
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`pursuant to 37 C.F.R. § 42.70(a). See Papers 69, 70, respectively. The
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`requests are GRANTED, as specified in this Order.
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`The hearing will be conducted in-person on August 10, 2022, in
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`Hearing Room B, on the ninth floor of Madison Building East, 600 Dulany
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`Street, Alexandria, Virginia at 2:00 PM EDT. The hearing will be open to
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`the public for in-person attendance, which will be accommodated on a first
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`come, first served basis. The Board will provide a court reporter for the
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`hearing, and the reporter’s transcript will constitute the official record of the
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`hearing. At the parties’ request, video attendance by in-house counsel and
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`other non-arguing attorneys will also be accommodated.
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`To facilitate planning, each party must contact PTAB Hearings at
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`PTABHearings@uspto.gov no later than three (3) business days prior to the
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`date of the oral hearing to receive any video set-up information. As a
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`reminder, all arrangements and expenses involved with appearing by video,
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`such as the selection of the facility from which a party will attend by video,
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`must be borne by that party. If a video connection cannot be established, the
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`parties will be provided with dial-in connection information. Should a party
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`prefer to participate in the oral hearing telephonically, they should notify
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`
`4 Papers cited in this Order are those filed in IPR2021-00880. Unless
`otherwise noted, corresponding papers have also been filed in IPR2021-
`00881.
`
`
`
`2
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`
`
`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
`
`PTAB Hearings at the above email address three (3) business days prior to
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`the hearing to receive dial-in connection information.
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`At the hearing, the Board will consider arguments concerning the two
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`cases together. Each party will have a total of sixty (60) minutes to present
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`its case. Petitioner bears the ultimate burden of demonstrating that the
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`claims as challenged in the petition and proposed in the revised motion to
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`amend are unpatentable. Thus, Petitioner will open the hearing by
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`presenting its case regarding the unpatentability of both the challenged
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`claims and the proposed substitute claims. Patent Owner will follow with its
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`response to Petitioner’s presentation. Petitioner may reserve rebuttal time
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`(of no more than half their total presentation time) to reply to Patent
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`Owner’s arguments. Likewise, Patent Owner may reserve sur-rebuttal time
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`(of no more than half its total presentation time) to reply to Petitioner’s
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`rebuttal. See Office Consolidated Trial Practice Guide, November 2019
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`Edition, 83, available at
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`https://www.uspto.gov/TrialPracticeGuideConsolidated; see also 84 Fed.
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`Reg. 64,280 (Nov. 21, 2019). A party may only present argument and
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`evidence at the hearing for which a proper foundation exists in the record.
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`Unless ordered otherwise, the parties are to refrain from disclosing
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`any confidential information during the hearing or including any confidential
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`information in a demonstrative exhibit. We note that a Protective Order has
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`been entered in these proceedings (see Paper 71) and certain evidence has
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`been filed under seal pursuant thereto. If protected material is intended to
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`be discussed at the oral hearing, the parties are instructed to (1) meet and
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`confer with respect to the use or discussion of such material at the oral
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`
`
`3
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`
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`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
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`hearing, and (2) contact the Board at least three (3) business days before the
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`hearing to discuss the matter.5
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`At least three (3) business days prior to the hearing, each party shall
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`serve on the other party any demonstrative exhibits it intends to use during
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`the hearing. See 37 C.F.R. § 42.70(b). Demonstrative exhibits are not
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`evidence and may not introduce new evidence or arguments. Demonstrative
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`exhibits should be clearly marked as such. At least three (3) business days
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`before the hearing, the parties must submit a copy of any demonstrative
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`exhibits to the Board by filing them as an exhibit. Any demonstrative
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`exhibit not served on a party or filed with the Board may not be used during
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`the hearing.
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`The parties must meet and confer in good faith to resolve any
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`objections to the propriety of any demonstrative exhibit. Any objection that
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`is not timely presented will be deemed waived. If any objections to
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`demonstrative exhibits cannot be resolved, the objecting party may file a
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`statement of objections with the Board at least two (2) business days before
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`the hearing. The statement of objections should identify with particularity
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`each demonstrative exhibit subject to objection and include a brief statement
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`(no more than a few sentences) of the reason for such objection. No
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`5 We note that we have granted Petitioner’s request that its Lead Counsel be
`relieved of any requirement to attend Oral Argument. Petitioner represents
`that it expects that its designated Backup Counsel will attend in person to
`make arguments for Petitioner.
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`
`
`4
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`
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`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
`
`argument or further explanation is permitted. Nor is a party permitted to file
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`a response to the statement of objections.
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`The Board will consider the statement of objections and schedule a
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`conference call if necessary. Otherwise, the Board will reserve ruling on the
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`objections until the time of the hearing. The parties are advised to limit
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`objections to demonstrative exhibits to egregious violations that are
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`prejudicial to the administration of justice. Generally, if the content of a
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`slide cannot be readily associated with an argument made or evidence
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`referenced in a substantive paper of record, the slide is inappropriate.
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`Conversely, if the content of a slide can be readily associated with an
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`argument made or evidence referenced in a substantive paper, it is proper.
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`Ideally, parties should indicate on each slide where support may be found in
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`a substantive paper and/or exhibit of record.
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`During the hearing, counsel must identify clearly and specifically each
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`demonstrative exhibit (e.g., by slide or screen number) referenced to ensure
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`clarity and accuracy of the transcript. The parties may only rely upon
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`evidence that has been previously submitted in the proceeding and may only
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`present arguments that have been previously made in the submitted papers.
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`No new evidence or arguments may be presented at the hearing. Nor will
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`live testimony be permitted at the hearing.
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`Either party may request a prehearing conference. See Office
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`Consolidated Trial Practice Guide, 82. The request for a prehearing
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`conference must be made by July 27, 2022. To request such a conference,
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`an email should be sent to Trials@uspto.gov, and propose several dates and
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`
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`5
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`
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`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
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`times of availability for both parties, as appropriate, that are no later than
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`three (3) business days prior to the oral hearing.
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`The Board expects lead counsel for each party to be present in person
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`at the hearing. Any counsel of record, however, may present the party’s
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`argument. If either party expects that its lead counsel will not be attending
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`the hearing, the parties should initiate a joint conference call with the Board
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`no later than three (3) business days prior to the hearing to discuss the
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`matter.
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`Any special requests for audio-visual equipment should be directed to
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`PTABHearings@uspto.gov. A party may also indicate any special requests
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`related to appearing at a video oral hearing, such as a request to
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`accommodate visual or hearing impairments, and indicate how the PTAB
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`may accommodate the special request. Any special requests must be
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`presented in a separate communication not less than three (3) days before the
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`hearing.
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`The panel will have access to all papers filed with the Board,
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`including demonstratives. During the oral hearing, the parties are advised to
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`remain muted and unmute yourself only when speaking, and identify clearly
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`and specifically each demonstrative (e.g., by slide or screen number), paper,
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`and exhibit referenced to ensure the clarity and accuracy of the court
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`reporter’s transcript. In addition, the parties are advised to identify
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`themselves each time they speak. Furthermore, the remote nature of the oral
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`hearing may also result in an audio lag, and so the parties are advised to
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`observe a pause prior to speaking, so as to avoid speaking over others.
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`Members of the public may request to listen in on this oral hearing. If
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`resources are available, the Board generally expects to grant such requests.
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`
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`6
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`
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`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
`
`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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`Board by contacting PTABHearings@uspto.gov at least three (3) business
`
`days prior to the oral hearing date.
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`The Board has established the “Legal Experience and Advancement
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`Program,” or “LEAP,” to encourage advocates with less legal experience to
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`argue before the Board to develop their skills. The Board defines a LEAP
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`practitioner as a patent agent or attorney having three (3) or fewer
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`substantive oral arguments in any federal tribunal, including PTAB.
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`The parties are encouraged to participate in the Board’s LEAP
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`program. Either party may request that a qualifying LEAP practitioner
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`participate in the program and conduct at least a portion of the party’s oral
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`argument. The Board will grant up to fifteen (15) minutes of additional
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`argument time to that party, depending on the length of the proceeding and
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`the PTAB’s hearing schedule. A party should submit a request, no later than
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`at least three (3) business days before the oral hearing, by email to the Board
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`at PTABHearings@uspto.gov.
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`The LEAP practitioner may conduct the entire oral argument or may
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`share time with other counsel, provided that the LEAP practitioner is offered
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`a meaningful and substantive opportunity to argue before the Board. The
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`party has the discretion as to the type and quantity of oral argument that will
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`be conducted by the LEAP practitioner. Moreover, whether the LEAP
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`practitioner conducts the argument in whole or in part, the Board will permit
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`more experienced counsel to provide some assistance to the LEAP
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`practitioner, if necessary, during oral argument, and to clarify any statements
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`on the record before the conclusion of the oral argument. Importantly, the
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`7
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`
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`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
`
`Board does not draw any inference about the importance of a particular issue
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`or issues, or the merits of the party’s arguments regarding that issue, from
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`the party’s decision to have (or not to have) a LEAP practitioner argue.
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`In instances where an advocate does not meet the LEAP eligibility
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`requirements due to the number of “substantive” oral hearing arguments, but
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`nonetheless has a basis for considering themselves to be in the category of
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`advocates that this program is intended to assist, the Board encourages
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`argument by such advocates during oral hearings. Even though additional
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`argument time will not be provided when the advocate does not qualify for
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`LEAP, a party may share argument time among counsel and the Board will
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`permit the more experienced counsel to provide some assistance, if
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`necessary, during oral argument, and to clarify any statements on the record
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`before the conclusion of the oral argument.
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`
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`It is hereby
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`ORDERED that, subject to the procedures set forth above, the parties’
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`request for an oral hearing is granted; and
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`FURTHER ORDERED that an oral hearing, conducted in accordance
`
`with the procedures set forth above, shall commence at 2:00 PM ET on
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`August 10, 2022.
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`
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`
`
`8
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`
`
`IPR2021-00880 (Patent 9,669,069 B2)
`IPR2021-00881 (Patent 9,254,338 B2)
`
`
`PETITIONER:
`
`Paul Molino
`William Rakoczy
`Neil McLaughlin
`Heinz Salmen
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`paul@rmmslegal.com
`wrakoczy@rmmslegal.com
`nmclaughlin@rmmslegal.com
`hsalmen@rmmslegal.com
`
`Teresa Rea
`Deborah Yellin
`Shannon Lentz
`CROWELL & MORING LLP
`trea@crowell.com
`dyellin@crowell.com
`slentz@crowell.com
`
`Lora Green
`Yahn-Lin Chu
`WILSON SONSINI GOODRICH & ROSATI
`lgreen@wsgr.com
`ychu@wsgr.com
`
`PATENT OWNER:
`
`Deborah Fishman
`Amanda Antons
`Alice Sin Yu Ho
`ARNOLD & PORTER KAYE SCHOLER LLP
`deborah.fishman@kayescholer.com
`amanda.antons@arnoldporter.com
`alice.ho@arnoldporter.com
`
`
`
`9
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`