Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`Paper 36
`Date: April 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AQUESTIVE THERAPEUTICS, INC.,
`Petitioner,
`v.
`NEURELIS, INC.,
`Patent Owner.
`
`
`Case IPR2019-00451
`Patent 9,763,876 B2
`
`
`Before ZHENYU YANG, JON B. TORNQUIST, and JAMIE T. WISZ,
`Administrative Patent Judges.
`
`WISZ, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`Paper 36
`Date: April 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AQUESTIVE THERAPEUTICS, INC.,
`Petitioner,
`v.
`NEURELIS, INC.,
`Patent Owner.
`
`
`Case IPR2019-00451
`Patent 9,763,876 B2
`
`
`Before ZHENYU YANG, JON B. TORNQUIST, and JAMIE T. WISZ,
`Administrative Patent Judges.
`
`WISZ, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2019-00451
`Patent 9,763,876 B2
`
`
`We instituted a trial for the instant proceeding on August 13, 2019.
`Paper 8. Petitioner and Patent Owner each requested an oral hearing
`pursuant to 37 C.F.R. § 42.70. Papers 31, 32. Upon consideration, the
`requests for oral hearing are granted.
`Oral arguments will commence at 1:00 PM (ET) on Thursday, May
`14, 2020, by video. The parties are directed to contact the Board at least ten
`(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.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.1
`
`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 five business days prior to the oral 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 to be
`used from which a party will attend by video, must be borne by that party. If
`a video connection cannot be established, the parties will be provided with
`dial-in connection information, and the oral hearing will be conducted
`telephonically.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above telephone
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`IPR2019-00451
`Patent 9,763,876 B2
`
`number five business days prior to the hearing to receive dial-in connection
`information.
`Each party will have one (1) hour, total, to present its arguments. See
`Office Consolidated Trial Practice Guide, November 2019 Edition, 81,
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019) (“The Board expects to ordinarily
`provide for an hour of argument per side for a single proceeding, but a party
`may request more or less time depending on the circumstances of the
`case.”). Petitioner will first present its case regarding the challenged claims
`for which the Board instituted trial. Thereafter, Patent Owner may respond
`to Petitioner’s argument. Petitioner may reserve rebuttal time (of no more
`than half its total argument time) to respond to Patent Owner’s arguments
`presented at the hearing. Thereafter, Patent Owner may reserve rebuttal time
`(of no more than half its total argument time) to respond to Petitioner’s
`arguments. See Office Consolidated Trial Practice Guide, November 2019
`Edition, 83. No live testimony from any witness will be taken at the oral
`argument.
`At least seven (7) business days prior to the hearing, each party shall
`serve on the other party any demonstrative exhibit(s) it intends to use during
`the hearing. See 37 C.F.R. § 42.70(b). At least five (5) business days before
`the hearing, the parties shall provide the demonstrative exhibits to the Board
`by emailing them at PTABHearings@uspto.gov. The parties shall not file
`any demonstrative exhibits in this case, without prior authorization from the
`Board.
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. For
`
`3
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`IPR2019-00451
`Patent 9,763,876 B2
`
`example, each slide may be marked with the words “DEMONSTRATIVE
`EXHIBIT – NOT EVIDENCE” in the footer. See Office Consolidated Trial
`Practice Guide, November 2019 Edition, 84. Demonstrative exhibits cannot
`be used to advance arguments or introduce evidence not previously
`presented in the record. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the
`petitioner’s] untimely argument . . . raised for the first time during oral
`argument”). Instead, demonstrative exhibits must cite to evidence in the
`record.
`The parties should attempt to work out any objections to
`demonstratives prior to involving the Board. Should either party disagree
`with the propriety of any of the opposing parties’ demonstratives, the party
`may send, two (2) business days prior to the hearing, an email to
`Trials@uspto.gov limited to identifying the opposing parties’ slide(s)
`objected to and a brief sentence as to the general basis of the objection. No
`further argument is permitted in that email. The Board will then take the
`objections under advisement, and if the content is inappropriate, it will not
`be considered. Any objection to demonstrative exhibits that is not timely
`presented will be considered waived. The Board asks the parties to confine
`demonstrative exhibit objections to those identifying egregious violations
`that are prejudicial to the administration of justice. 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. In
`general, if the content on a slide cannot be readily associated with an
`argument made, or evidence referenced, in a substantive paper, it is
`
`4
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`IPR2019-00451
`Patent 9,763,876 B2
`
`inappropriate. The best practice is to indicate on each slide where support
`may be found in a substantive paper and/or an exhibit of record in this
`proceeding.
`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. As noted above, each member of the panel will be
`attending the hearing electronically from a remote location. If a
`demonstrative exhibit is not emailed to the Board or otherwise made fully
`available or visible to all judges at the hearing, that demonstrative exhibit
`will not be considered. If the parties have questions as to whether
`demonstrative exhibits would be sufficiently visible and available to all of
`the judges, the parties are invited to contact the Board at (571) 272-9797.
`The Board generally expects lead counsel for each party to be present
`by video at the oral hearing. Any counsel of record may present the party’s
`argument as long as that counsel is present by video.
`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 oral hearing, such as a request to
`accommodate 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 (5) days before the
`hearing.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the oral hearing, the parties are advised to identify clearly and specifically
`
`5
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`IPR2019-00451
`Patent 9,763,876 B2
`
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the oral hearing may also result in an audio lag, and so the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`Members of the public may request to listen in on this oral 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 by contacting PTABHearings@uspto.gov at least five (5) business
`days prior to the oral hearing date.
`
`
`
`6
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`
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`IPR2019-00451
`Patent 9,763,876 B2
`
`
`It is
`ORDERED that oral argument will commence at 1:00 PM (ET) on
`May 14, 2020.
`
`
`
`
`
`
`7
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`
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`IPR2019-00451
`Patent 9,763,876 B2
`
`PETITIONER:
`
`Daniel Scola
`Michael Chakansky
`James Harrington
`Matthew Solow
`HOFFMAN & BARON, LLP
`dscola@hbiplawcom
`mchakansky@hbiplaw.com
`jfhdocket@hbiplaw.com
`msolow@hbiplaw.com
`
`
`
`PATENT OWNER:
`
`Jeffrey Guise
`Richard Torczon
`Lorelei Westin
`Lee Johnson
`Nathaniel Leachman
`Alina L. Litoshyk
`WILSON, SONSINI, GOODRICH & ROSATI
`jguise@wsgr.com
`rtorczon@wsgr.com
`lwestin@wsgr.com
`ljohnson@wsgr.com
`nleachman@wsgr.com
`alitoshyk@wsgr.com
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
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