`
`
`Paper: 28
`Date: January 16, 2024
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MEDIVIS, INC.,
`Petitioner,
`
`v.
`
`NOVARAD CORP.,
`Patent Owner.
`____________
`
`IPR2023-00042 (Patent 11,004,271 B2)
`IPR2023-00045 (Patent 10,945,807 B2)1
`____________
`
`
`
`Before MIRIAM L. QUINN, MICHAEL R. ZECHER, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`1 The Board exercises its discretion to mail the same Order in both of these
`proceedings. The parties are not authorized to use this caption format.
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 B2
`
`
`
`I.
`
`ORAL ARGUMENT
`
`A. Time and Format2
`Oral arguments will commence at 1:00 PM Eastern Time on
`January 30, 2024, by VIDEO. 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 requested oral argument, but Patent Owner did not.
`However, we expect the hearing will proceed as usual, with counsel for both
`parties presenting argument. Should Patent Owner choose not to participate,
`Patent Owner must inform the Board via email prior to the hearing. The
`Board will enter into the record Patent Owner’s waiver of oral argument and
`adjust the length of the hearing accordingly.
`Petitioner will have a total of ninety (90) minutes to present
`argument in both cases. Should Patent Owner choose to participate, it will
`have a total of ninety (90) 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
`
`
`2 If a party is no longer able to appear for the hearing, the party must contact
`PTABHearings@uspto.gov as soon as possible.
`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.
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 B2
`
`
`Practice Guide4 (“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 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
`at Trials@uspto.gov at least three (3) 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 three (3) business days before the hearing date and
`filed no later than one (1) business day before 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,
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`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.
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 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 one (1) business day before 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,
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 B2
`
`
`and may reserve ruling on the objections.6 Any objection to demonstratives
`that is not timely presented will be considered waived.
`Petitioner’s request for oral argument “requests clarification as to how
`demonstratives will be handled with respect to virtual oral arguments.” E.g.,
`IPR2023-00042, Paper 24 at 1. Petitioner should direct specific questions to
`PTAB hearings staff at 571-272-9797 or PTABHearings@uspto.gov.
`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 or Telephonic Hearing Details
`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
`
`
`6 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 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 only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. 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.7
`
`E. 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 (10) business
`days prior to the hearing date.
`
`
`7 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 B2
`
`
`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
`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 (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.8
`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
`
`
`8 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.
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 B2
`
`
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.9
`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.10 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 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
`
`
`9 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.
`10 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.
`
`
`
`IPR2023-00042, -00045
`Patents 11,004,271 B2, 10,945,807 B2
`
`
`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 January 30, 2024, by VIDEO, and shall
`proceed in the manner set forth herein.
`
`FOR PETITIONER
`Kia L. Freeman
`John Curran
`MCCARTER & ENGLISH, LLP
`kfreeman@mccarter.com
`jcurran@mccarter.com
`
`FOR PATENT OWNER
`Joseph Harmer
`Jed H. Hansen
`THORPE NORTH & WESTERN LLP
`joseph.harmer@tnw.com
`hansen@tnw.com
`
`
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