Trials@uspto.gov
`571-272-7822
`
` Paper 41
`
`Entered: March 11, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC.,
`Petitioner,
`
`v.
`
`UCB BIOPHARMA SPRL,
`Patent Owner.
`____________
`
`IPR2019-00400
`Patent 8,633,194 B2
`____________
`
`
`
`Before ROBERT A. POLLOCK, RYAN H. FLAX, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`571-272-7822
`
` Paper 41
`
`Entered: March 11, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC.,
`Petitioner,
`
`v.
`
`UCB BIOPHARMA SPRL,
`Patent Owner.
`____________
`
`IPR2019-00400
`Patent 8,633,194 B2
`____________
`
`
`
`Before ROBERT A. POLLOCK, RYAN H. FLAX, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`
`We instituted inter partes review in the instant proceeding on July 15,
`2019. Paper 17. The Revised Scheduling Order for this proceeding sets the
`date for oral argument as April 22, 2020, if requested by the parties and
`granted by the Board. Paper 21, 9. On March 5, 2020, Petitioner and Patent
`Owner filed requests for oral argument. Paper 39; Paper 40. The parties’
`requests for oral argument are granted.
`Oral argument shall commence at 1:00 p.m. Eastern Time on April 22,
`2020, at the USPTO Headquarters in Hearing Room A, located on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`The hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. The parties are directed to
`contact the Board at least 10 days in advance of the hearing if there are any
`concerns about disclosing confidential information. The Board will provide
`a court reporter for the hearing, and the reporter’s transcript will constitute
`the official record of the hearing. To facilitate planning, each party must
`send an email message to PTABHearings@uspto.gov five days prior to the
`hearing if the number planning to attend the hearing in-person for its side
`(attorneys and others) exceeds five people.
`Each party shall have 60 minutes of total time to present arguments.
`Petitioner will open the hearing by presenting its case regarding the
`unpatentability of the challenged claims. Patent Owner then will respond to
`Petitioner’s presentation. Petitioner may reserve rebuttal time (of no more
`than half their total presentation time) to reply to Patent Owner’s arguments.
`Patent Owner may reserve sur-rebuttal time (of no more than half its total
`presentation time) to respond to Petitioner’s rebuttal. See Office
`2
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`Consolidated Trial Practice Guide, November 2019 Edition, 83, available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated; see also 84 Fed.
`Reg. 64,280 (Nov. 21, 2019).
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been filed.
`Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served at least seven business days before the hearing date. Thus, the parties
`shall serve on opposing counsel demonstrative exhibits no later than April
`13, 2020. Notwithstanding 37 C.F.R. § 42.70(b), demonstratives should be
`filed at the Board than no later than April 22, 2020 to facilitate the panel’s
`preparation. A hard copy of the demonstrative exhibits should be provided
`to the court reporter at the oral argument. The parties should consider the
`information regarding demonstrative materials discussed in the Office
`Consolidated Trial Practice Guide, available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`We remind the parties that demonstrative exhibits are not evidence
`and should be labeled accordingly (e.g., “DEMONSTRATIVE – NOT
`EVIDENCE), but are intended to assist the parties in presenting their oral
`arguments to the Board. We also remind the parties that demonstrative
`exhibits are not a mechanism for making arguments not previously
`addressed in the papers. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`1369 (Fed. Cir. 2018). The parties are directed to St. Jude Medical,
`Cardiology Division, Inc. v. Board of Regents of the University of Michigan,
`Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance
`3
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`regarding the appropriate content of demonstrative exhibits, which must
`include citations to the record.
`To the extent that the parties object to the propriety of any
`demonstrative exhibits, we expect the parties will meet and confer in good
`faith to resolve any objections to demonstrative exhibits. If such objections
`cannot be resolved, the parties may file objections to demonstratives with
`the Board at least two business days before the oral argument. The
`objections should identify with particularity the portions of each
`demonstrative exhibit subject to objection, include a copy of the objected-to
`portions, and include a one-sentence statement of the reason for each
`objection. No further argument or explanation is permitted. We will
`consider any objections and schedule a conference call if deemed necessary.
`Otherwise, we 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. During the oral argument, 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. No live witness testimony
`shall be taken at the oral argument.
`Either party may request a pre-hearing conference. Office
`Consolidated Trial Practice Guide, 82. Requests for a pre-hearing
`conference must be made by April 7, 2020. To request such a conference,
`an email should be sent to Trials@uspto.gov including several dates and
`times of availability for one or both parties, as appropriate, that are generally
`
`4
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`no later than three business days prior to the oral hearing. Please refer to the
`Guide for more information on the pre-hearing conference.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument as long as that counsel is present in person.
`A party may request that counsel be permitted to present arguments
`remotely from an alternative USPTO location. The 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 that counsel be permitted to present arguments from a
`remote location, a party should send an email message to
`PTABHearings@uspto.gov at least ten business days or as soon as practical
`prior to the hearing and provide a short statement of reasons for the request.
`The Board will notify the parties if the request is approved. Approval of the
`request does not guarantee that a panel member will be present at the remote
`location.
`A party may also request remote video attendance for one or more of
`its other attendees to view the hearing from any USPTO location. To
`request remote video viewing, a party must send an email message to
`PTABHearings@uspto.gov ten 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.
`
`5
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`
`The Board hearing rooms can be equipped with presentation
`equipment, including a projector, connectors, and a screen. Any requests for
`audio-visual equipment should be directed to PTABHearings@uspto.gov. A
`party may also indicate any special requests related to appearing at an in-
`person oral hearing, such as a request to accommodate physical needs that
`limit mobility or visual or hearing impairments, and indicate how the PTAB
`may accommodate the special request. Any special requests must be
`presented in a separate communication not less than five days before the
`hearing.
`It is hereby:
`ORDERED that the parties’ requests for oral argument are granted
`subject to the conditions set forth in this Order; and
`FURTHER ORDERED that oral argument for this proceeding shall
`take place beginning at 1:00 p.m. Eastern Time on April 22, 2020, at
`USPTO Headquarters in Hearing Room A, located on the 9th floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`6
`
`
`
`IPR2019-00400
`Patent 8,633,194 B2
`
`
`
`PETITIONER:
`
`Jitendra Malik
`Alissa Pacchioli
`Joseph Janusz
`Lance Soderstrom
`KATTEN MUCHIN ROSENMAN LLP
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`joe.janusz@kattenlaw.com
`lance.soderstrom@kattenlaw.com
`
`
`PATENT OWNER:
`
`James Trainor
`Robert Counihan
`Erica Sutter
`FENWICK & WEST LLP
`jtrainor@fenwick.com
`rcounihan@fenwick.com
`esutter@fenwick.com
`
`7
`
`
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