Paper 28
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 28, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLATWING PHARMACEUTICALS, LLC and MYLAN
`PHARMACEUTICALS, INC.,
`Petitioners,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00168 (Patent 9,549,938 B2)
`Case IPR2018-00169 (Patent 9,566,289 B2)
`Case IPR2018-00170 (Patent 9,566,290 B2)
`Case IPR2018-00171 (Patent 9,572,823 B2)1
`____________
`
`
`Before GRACE KARAFFA OBERMANN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 Cases IPR2018-01358, -1359, -1360, and -1361 have been joined with
`Cases IPR2018-00168, -169, -170, and -171, respectively. This order
`addresses issues that are common to all four cases. We, therefore, issue a
`single order that has been entered in each case. Paper numbers refer to those
`filed in IPR2018-00168.
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 28, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLATWING PHARMACEUTICALS, LLC and MYLAN
`PHARMACEUTICALS, INC.,
`Petitioners,
`
`v.
`
`ANACOR PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00168 (Patent 9,549,938 B2)
`Case IPR2018-00169 (Patent 9,566,289 B2)
`Case IPR2018-00170 (Patent 9,566,290 B2)
`Case IPR2018-00171 (Patent 9,572,823 B2)1
`____________
`
`
`Before GRACE KARAFFA OBERMANN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 Cases IPR2018-01358, -1359, -1360, and -1361 have been joined with
`Cases IPR2018-00168, -169, -170, and -171, respectively. This order
`addresses issues that are common to all four cases. We, therefore, issue a
`single order that has been entered in each case. Paper numbers refer to those
`filed in IPR2018-00168.
`
`
`
`
`
`
`
`IPR2018-00168 (Patent 9,549,938 B2)
`IPR2018-00169 (Patent 9,566,289 B2)
`IPR2018-00170 (Patent 9,566,290 B2)
`IPR2018-00171 (Patent 9,572,823 B2)
`
`
`Pursuant to our scheduling order, oral argument is scheduled to be
`held on March 1, 2019, if requested by the parties. Paper 10. Petitioner and
`Patent Owner have jointly requested oral argument. Paper 26. The request
`is granted subject to the conditions and under the terms set forth below.
`The oral argument will commence at 1:00 PM Eastern Time, on
`Friday, March 1, 2019, on the ninth floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia 22314. The oral argument will be open
`to the public for in-person attendance, which will be accommodated on a
`first-come, first-served basis.
`The parties have each requested 45 minutes total to present arguments
`for all four proceedings. Petitioner bears the ultimate burden of proof that
`Patent Owner’s patent claims at issue are unpatentable. Therefore, at oral
`argument, Petitioner will proceed first to present its case with respect to the
`challenged patent claims and the grounds on which the Board instituted trial.
`Petitioner may reserve some of its argument time for rebuttal. Patent Owner
`will then respond to Petitioner’s initial presentation and may reserve time for
`sur-rebuttal.
`The Board will provide a court reporter for the oral argument, and the
`reporter’s transcript will constitute the official record of the oral argument.
`The hearing transcript will be entered in the record of this proceeding. The
`Board’s August 2018 Trial Practice Guide Update (“TPGU”) provides an
`opportunity for the parties to request a pre-hearing conference. See
`TPGU 19 (“The purpose of the pre-hearing conference is to afford the
`
`2
`
`
`
`
`
`
`IPR2018-00168 (Patent 9,549,938 B2)
`IPR2018-00169 (Patent 9,566,289 B2)
`IPR2018-00170 (Patent 9,566,290 B2)
`IPR2018-00171 (Patent 9,572,823 B2)
`
`parties the opportunity to preview (but not argue) the issues to be discussed
`at the oral hearing, and to seek the Board’s guidance as to particular issues
`that the panel would like addressed by the parties.”). If either party desires a
`pre-hearing conference, the parties should jointly contact the Board at least
`seven business days before the hearing to request a conference call for that
`purpose.
`The parties shall serve any demonstrative exhibits on opposing
`counsel at least seven business days before the hearing. 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. Notwithstanding 37 C.F.R. § 42.70(b), the parties shall
`not file any demonstrative exhibits in these proceedings without prior
`authorization from the Board.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. The parties shall confer with each other
`regarding any objections to demonstrative exhibits. For any issue that
`cannot be resolved after conferring, the parties may each file a one-page list
`of objections at least three business days before the hearing. The list should
`identify with particularity which demonstrative exhibits are subject to
`
`3
`
`
`
`
`
`
`IPR2018-00168 (Patent 9,549,938 B2)
`IPR2018-00169 (Patent 9,566,289 B2)
`IPR2018-00170 (Patent 9,566,290 B2)
`IPR2018-00171 (Patent 9,572,823 B2)
`
`objection and include a short statement of the reason for each objection. No
`argument or further explanation is permitted.
`The Board will consider the objections and schedule a telephone
`conference if deemed necessary. Otherwise, the Board will reserve ruling on
`the objections until after the oral argument. Any objection to demonstrative
`exhibits that is not timely presented will be considered waived.
`The parties are advised that at least one member of the panel will be
`attending the hearing from a remote location. The parties are reminded that
`the presenter must identify clearly and specifically each demonstrative
`exhibit (e.g., by slide or screen number) referenced during the hearing to
`ensure the clarity and accuracy of the reporter’s transcript and the ability of
`the judge participating remotely to follow the presenter’s arguments. The
`parties should note that the remote judge will not be able to see what is
`projected on the screen in the hearing room.
`The Board expects lead counsel for each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party will not be in attendance at
`oral hearing, the Board should be notified via a joint telephone conference
`call no later than two business days before the oral hearing to discuss the
`matter.
`The parties may request the use of audio-visual equipment during the
`oral hearing. Formal requests are to be made five business days in advance
`
`4
`
`
`
`
`
`
`IPR2018-00168 (Patent 9,549,938 B2)
`IPR2018-00169 (Patent 9,566,289 B2)
`IPR2018-00170 (Patent 9,566,290 B2)
`IPR2018-00171 (Patent 9,572,823 B2)
`
`of the hearing date and should be sent to Trials@uspto.gov. If the request is
`not timely, the equipment may not be available on the day of the hearing.
`
`
`PETITIONERS:
`
`Philip D. Segrest Jr.
`philip.segrest@huschblackwell.com
`
`Eric J. Rakestraw
`eric.rakestraw@huschblackwell.com
`
`
`PATENT OWNER:
`
`Aaron P. Maurer
`amaurer@wc.com
`
`David I. Berl
`dberl@wc.com
`
`
`5
`
`
`
`
`
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