Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 76
`Entered: October 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC,
`Patent Owner.
`____________
`
`IPR2018-014031
`Patent No. 8,399,514 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`1 IPR2019-00789 has been joined with this proceeding.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 76
`Entered: October 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC,
`Patent Owner.
`____________
`
`IPR2018-014031
`Patent No. 8,399,514 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`1 IPR2019-00789 has been joined with this proceeding.
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`Oral hearing in this case is set for November 13, 2019, if a hearing is
`requested by the parties and granted by the Board. Paper 13. Both parties
`have requested oral hearing pursuant to 37 C.F.R. § 42.70. Papers 65 and
`66. The parties’ requests for oral hearing are granted.
`
`A. Time and Format
`The hearing will commence at 1:00 PM Eastern Time on November
`13, 2019. The hearing will be open to the public, for in-person attendance,
`on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia. In-person attendance will be accommodated on a first come, first
`served basis. 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 combined 60 minutes to present argument in
`this case and Patent Owner will have 60 minutes to respond. Petitioner
`bears the ultimate burden of proof that Patent Owner’s claims at issue are
`unpatentable. Therefore, Petitioner will open the hearing by presenting their
`case regarding the challenged claims for which the Board instituted trial.
`After Petitioner’s presentation, 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 Board’s August 2018
`Trial Practice Guide Update (“TPGU”), Patent Owner may reserve up to 5
`minutes of time for sur-rebuttal.
`The Trial Practice Guide Update 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 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
`
`2
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`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.
`
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstrative exhibits shall be
`served on opposing counsel at least seven business days before the hearing.
`However, in regard to filing demonstrative exhibits, and in contrast to what
`is expressly stated in § 42.70(b), the parties shall file the demonstrative
`exhibits no later than two business days before the hearing, to allow the
`panel sufficient time to review the materials.
`The panel reminds the parties that demonstrative exhibits are not
`evidence, but are intended to assist the parties in presenting their oral
`arguments to the Board. Demonstrative exhibits should be clearly marked as
`such. For example, each slide may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. The
`panel will distinguish evidence in the record from argument appearing in
`demonstrative exhibits, and all arguments must be supported by evidence
`already of record. The panel also reminds the parties that demonstrative
`exhibits are not a mechanism for making arguments not previously
`addressed in the Papers. The panel will not consider arguments or evidence
`appearing only in demonstrative exhibits.
`Due to the nature of the panel’s consideration of demonstrative
`exhibits, the panel does not anticipate that objections to such exhibits would
`likely be sustained. Nevertheless, to the extent that the parties object to the
`propriety of any demonstrative exhibit, we expect that the parties will meet
`and confer in good faith to resolve any objections to demonstrative exhibits.
`
`3
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`If such objections cannot be resolved, the parties may file any objections to
`demonstratives with the Board at least two business days before the hearing.
`The objections should identify with particularity which portions of the
`demonstrative exhibits 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. We will
`consider any objections and schedule a conference call if deemed necessary.
`Otherwise, we will reserve ruling on the objections. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived.
`Finally, the parties are reminded that each 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 for the benefit of any judge(s) who may be
`participating electronically from USPTO Regional Offices.
`
`C. Lead Counsel
`The Board expects lead counsel for each party to be present at the oral
`hearing, although any backup counsel may present the party’s argument. If
`either lead counsel is unable to be present at the hearing, the Board shall be
`advised by email no later than two (2) business days prior to the oral
`hearing, and such lead counsel shall be available for a conference call if
`necessary.
`
`D. Remote Video Attendance Request
`A party may request remote video attendance for one or more of its
`other attendees to view the hearing from any USPTO location. The
`
`4
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`available locations include the Texas Regional Office in Dallas, Texas; the
`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`in San Jose, CA. To request remote video viewing, a party must send an
`email message to Trials@uspto.gov five business days prior to the hearing,
`indicating the requested location and the number planning to view the
`hearing from the remote location. The Board will notify the parties if the
`request for video viewing is granted. Note that it may not be possible to
`grant the request due to the availability of resources.
`
`E. Audio/Visual Equipment Requests
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment are to be made 5 days in advance of the hearing date. The
`request is to be sent to Trials@uspto.gov. If the request is not received
`timely, the equipment may not be available on the day of the hearing.
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall commence at
`1:00 PM Eastern Time on November 13, 2019, on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia, and
`proceed in the manner set forth herein.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01403
`Patent No. 8,399,514 B2
`
`
`PETITIONER:
`
`Brandon White
`David L. Anstaett
`Maria A. Stubbings
`Emily J. Greb
`Courtney M. Prochnow
`Nathan K. Kelley
`white-ptab@perkinscoie.com
`BMWhite@perkinscoie.com
`DAnstaett@perkinscoie.com
`Mstubbings@perkinscoie.com
`EGreb@perkinscoie.com
`CProchnow@perkinscoie.com
`NKelley@perkinscoie.com
`
`
`PATENT OWNER:
`
`Barbara McCurdy
`Erin Sommers
`Pier DeRoo
`Mark Feldstein
`Cora R. Holt
`Barbara.mccurdy@finnegan.com
`Mark.feldstein@finnegan.com
`Erin.sommers@finnegan.com
`Pier.deroo@finnegan.com
`cora.holt@finnegan.com
`
`
`6
`
`
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