`
`
`Paper No. 50
`Entered: April 28, 2020
`
`Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ADAPT PHARMA OPERATIONS LIMITED, and
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B21
`
`____________
`
`Before: ERICA A. FRANKLIN, ZHENYU YANG, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`1 This Order addresses an issue common to each referenced case. We,
`therefore, issue a single order to be entered in each case. For convenience,
`paper numbers refer to those filed in IPR2019-00685.
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`
`Pursuant to 37 C.F.R. § 42.70 and the Scheduling Order (Paper 12),
`both parties have requested a consolidated oral hearing in the above-
`referenced cases. Papers 42, 43. The parties’ requests for oral hearing are
`granted.
`Oral arguments will commence at 10:30 AM (ET) on Tuesday,
`May 19, 2020, by video. 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.2
`
`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
`
`
`2 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`number five business days prior to the hearing to receive dial-in connection
`information.
`As the parties requested, each party will have 45 minutes, total, to
`present its arguments. See Paper 42, 1; Paper 43, 2. Petitioner will open the
`hearing and may present arguments regarding the challenged claims for
`which the Board instituted trial and its motion to exclude, if any. Patent
`Owner will then respond to Petitioner’s arguments, and may additionally
`present its arguments regarding its motion to exclude, if any. Petitioner may
`reserve rebuttal time (of no more than half its total argument time) to
`respond to Patent Owner’s arguments. Patent Owner may reserve time for a
`brief sur-rebuttal. See Office Consolidated Trial Practice Guide, November
`2019 Edition, 83.3
`At least seven 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 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
`example, each slide may be marked with the words “DEMONSTRATIVE
`EXHIBIT – NOT EVIDENCE” in the footer. See Office Consolidated Trial
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`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 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
`inappropriate. The best practice is to indicate on each slide where support
`4
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`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 business 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
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 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 business days
`prior to the oral hearing date.
`
`It is
`ORDERED that oral argument will commence at 10:30 AM (ET) on
`May 19, 2020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`PETITIONER:
`Yelee Kim
`Janine Carlan
`Richard Berman
`Bradford Frese
`Christopher Yaen
`ARENT FOX LLP
`yelee.kim@arentfox.com
`janine.carlan@arentfox.com
`richard.berman@arentfox.com
`bradford.frese@arentfox.com
`christopher.yaen@arentfox.com
`
`PATENT OWNER ADAPT PHARMA OPERATIONS LIMITED:
`
`Jessamyn S. Berniker
`David M. Krinsky
`Anthony Sheh
`WILLIAMS & CONNOLLY LLP
`jberniker@wc.com
`dkrinsky@wc.com
`asheh@wc.com
`
`
`
`PATENT OWNER OPIANT PHARMACEUTICALS, INC.:
`
`Jessica Tyrus Mackay
`Ann K. Kotze
`GREEN, GRIFFITH & BORG-BREEN, LLP
`jmackay@greengriffith.com
`akotze@greengriffith.com
`
`
`7
`
`
`
`
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