`Tel: 571-272-7822
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`Paper: 54
`Entered: January 20, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`SLAYBACK PHARMA LLC,
`Petitioner,
`v.
`EYE THERAPIES, LLC,
`Patent Owner.
`
`IPR2022-00142
`Patent 8,293,742 B2
`
`
`Before TINA E. HULSE, ROBERT A. POLLOCK, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
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`IPR2022-00142
`Patent 8,293,742 B2
`
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`A. Time and Format1
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`I. ORAL ARGUMENT
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`
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`At the parties’ joint request (Papers 51, 52), an oral argument in this
`proceeding will commence at 1:00 pm Eastern Time on February 27, 2023, at
`the USPTO Headquarters in Alexandria, Virginia. 2, 3 The Board will provide a
`court reporter for the hearing, and the reporter’s transcript will constitute the
`official record of the hearing.
`Petitioner will have a total of sixty minutes to present its argument in this
`proceeding and Patent Owner will have a total of sixty minutes to respond.
`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 Guide4 (“CTPG”), issued in November 2019, Patent Owner may reserve
`time for a brief sur-rebuttal. See CTPG 83.
`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
`
`
`1 If a party is no longer able to appear in-person for the hearing, the party must
`contact PTABHearings@uspto.gov as soon as possible.
`2 The U.S. Patent and Trademark Office (“USPTO”) is concerned with the health
`and safety of all of its stakeholders, and will continue to follow all applicable
`health guidance. Prior to arriving at any USPTO office location, please consult the
`following to verify entry requirements: https://www.uspto.gov/coronavirus.
`3 If there are any concerns about disclosing confidential information, the parties
`must contact the Board at Trials@uspto.gov at least ten business days before the
`hearing date.
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`IPR2022-00142
`Patent 8,293,742 B2
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`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 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 business days before the hearing date and filed no
`later than the time of the hearing. 5 The parties shall also provide a courtesy copy
`of any demonstrative exhibits to the Board no later than three business days
`before the hearing by emailing them to Trials@uspto.gov.
`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,
`
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`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 business days before the hearing date.
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`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 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
`reserve ruling on the objections. 6 Any objection to demonstratives that is not
`timely presented will be considered waived.
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`6 If time permits, the Board may schedule a conference call with the parties to
`discuss any filed objections.
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`C. Presenting Counsel
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`
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`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 in person.
`
`D. Remote Attendance Requests
`
`Members of the public may request to listen to and/or view 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 Board at
`PTABHearings@uspto.gov at least ten business days prior to the hearing date.
`
`E. 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 deaf or hard-of-
`hearing individuals and blind or low vision individuals, and indicate how the
`PTAB may accommodate the special request. Any special requests must be
`presented in a separate communication at least five business days before the
`hearing date.
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`F. 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
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`a patent agent or attorney having three or fewer substantive oral arguments in any
`federal tribunal, including PTAB.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 argument. The Board
`will grant up to fifteen 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 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
`
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`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 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.
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`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 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.
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall commence at
`1:00 pm Eastern Time on February 27, 2023, at the USPTO Headquarters in
`Alexandria, Virginia, and proceed in the manner set forth herein; and
`ORDERED that all attendees of any in-person hearing shall adhere to the
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`self-certification and masking guidelines as set forth at the USPTO website. 10
`
`
`FOR PETITIONER:
`
`Linnea P. Cipriano
`Louis H. Weinstein
`Patrick G. Pollard
`WINDELS MARX LANE & MITTENDORF, LLP
`lcipriano@goodwinlaw.com
`lweinstein@windelsmarx.com
`ppollard@windelsmarx.com
`
`
`FOR PATENT OWNER:
`
`Bryan C. Diner
`Justin J. Hasford
`Caitlin E. O’Connell
`Christina Ji-Hye Yang
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`bryan.diner@finnegan.com
`justin.hasford@finnegan.com
`caitlin.o’connell@finnegan.com
`christina.yang@finnegan.com
`
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`10 https://www.uspto.gov/coronavirus/covid-19-community-levels-and-safety-
`protocols-uspto-office-locations.
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