Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper 20
`
` Date: April 3, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` GRÜNENTHAL GMBH,
`Petitioner,
`v.
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2019-00026 (Patent 9,931,352)
` Case PGR2019-00027 (Patent 10,039,774)
` Case PGR2019-00028 (Patent 10,052,338)1
`____________
`
`
`
`Before GRACE K. OBERMANN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This Order addresses issues common to all three proceedings. The parties
`are not authorized to use this style heading in any papers.
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper 20
`
` Date: April 3, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` GRÜNENTHAL GMBH,
`Petitioner,
`v.
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2019-00026 (Patent 9,931,352)
` Case PGR2019-00027 (Patent 10,039,774)
` Case PGR2019-00028 (Patent 10,052,338)1
`____________
`
`
`
`Before GRACE K. OBERMANN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This Order addresses issues common to all three proceedings. The parties
`are not authorized to use this style heading in any papers.
`
`
`
`PGR2019-00026 (Patent 9,931,352)
`PGR2019-00027 (Patent 10,039,774)
`PGR2019-00028 (Patent 10,052,338)
`
`
`I. HEARING AND ATTENDANCE
`Both Petitioner and Patent Owner request an oral hearing pursuant to
`37 C.F.R. § 42.70 in each of the three proceedings identified in the caption.
`Paper 17, 18.2 The requests are granted subject to the conditions set forth in
`this Order.
`Oral argument(s) will commence at 1:00 PM Eastern Time on
`April 24, 2020, by video. 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.
`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.3
`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 five (5) 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
`
`
`2 Petitioner filed the same, and Patent Owner filed substantially the same,
`requests in each proceeding. For convenience, paper numbers refer to
`papers filed in PGR2019-00026.
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`PGR2019-00026 (Patent 9,931,352)
`PGR2019-00027 (Patent 10,039,774)
`PGR2019-00028 (Patent 10,052,338)
`
`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
`number five (5) business days prior to the hearing to receive dial-in
`connection information.
`Petitioner requests that all “three proceedings be heard at the same
`time and requests a total of ninety minutes per side.” Paper 17, 1. “Patent
`Owner agrees with Petitioner’s request that oral argument in all three matters
`should be heard at the same time, and that each side should have a total of
`ninety minutes in which to present.” Paper 18, 1. The cases shall be heard
`in a consolidated hearing in which each side will have ninety (90) minutes to
`present. These proceedings, however, are not consolidated. The parties are
`directed to prevent blurring of the evidence between proceedings (for
`example, by referring to an exhibit filed in one proceeding while advancing
`argument in another proceeding in which the same exhibit is not of record).
`Petitioner will present its case first. Patent Owner will then present its
`case. Next, Petitioner may use any time it has reserved for rebuttal, not to
`exceed half the time allotted to it for argument, to respond to issues raised
`during Patent Owner’s argument. Lastly, Patent Owner may use any time it
`has reserved for sur-rebuttal, not to exceed thirty (30) minutes, to address
`issues raised during Petitioner’s rebuttal.
`The Board expects lead counsel for each party to be present by video
`at the oral hearing. However, any counsel of record may present a party’s
`argument as long as that counsel is present by video. If either party expects
`
`3
`
`
`
`PGR2019-00026 (Patent 9,931,352)
`PGR2019-00027 (Patent 10,039,774)
`PGR2019-00028 (Patent 10,052,338)
`
`that its lead counsel will not be attending the oral argument, the parties
`should initiate a joint telephone conference with the Board no later than two
`(2) business days prior to the oral hearing to discuss the matter.
`
`II. DEMONSTRATIVE EXHIBITS
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days before the hearing. The parties also shall
`provide the demonstrative exhibits to the Board at least two (2) business
`days prior to the hearing by emailing them to Trials@uspto.gov. Despite the
`requirement in § 42.70(b) for parties to file demonstratives, the parties shall
`not file any demonstrative exhibits in these cases 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 of a demonstrative exhibit may be marked with the
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`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”). Each demonstrative must include a
`citation to the page number(s) of the paper(s) where the argument or
`evidence that is the subject of the demonstrative was advanced by a party.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041,
`Paper 65 (PTAB Jan. 27, 2014), regarding the appropriate content of
`
`4
`
`
`
`PGR2019-00026 (Patent 9,931,352)
`PGR2019-00027 (Patent 10,039,774)
`PGR2019-00028 (Patent 10,052,338)
`
`demonstrative exhibits. The Board expects that the parties will meet and
`confer in good faith to resolve any objections to demonstrative exhibits, but
`if such objections cannot be resolved the parties may file any objections to
`demonstratives with the Board at least two (2) 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. The Board
`will consider any objections and schedule a conference call if deemed
`necessary. Otherwise, the Board will reserve ruling on the objections. Any
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`The panel will have access to all papers filed with the Board, as well
`as demonstratives submitted via email according to the above instructions.
`During the oral hearing, the parties must identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. The Board requests
`identification for all exhibits discussed during oral argument in the interest
`of providing a clear record. In addition, the parties are requested to identify
`themselves each time they speak. Further, the remote nature of the oral
`hearing may also result in an audio lag. Accordingly, counsel should
`observe a pause prior to speaking, so as to avoid speaking over others.
`Please unmute yourself only when speaking.
`Per the Office Patent Trial Practice Guide, either party may request a
`pre-hearing conference. See Office Patent Trial Practice Guide, 84 Fed.
`
`5
`
`
`
`PGR2019-00026 (Patent 9,931,352)
`PGR2019-00027 (Patent 10,039,774)
`PGR2019-00028 (Patent 10,052,338)
`
`Reg. 64,280 (Nov. 21, 2019), which is available at the following link:
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
`Requests for a pre-hearing conference must be made by April 13, 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 no later than three business days prior to the
`oral hearing. Please refer to the Trial Practice Guide for more information
`on the pre-hearing conference. See id. Section II.M.
`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.
`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.
`
`
`
`It is
`
`6
`
`
`
`PGR2019-00026 (Patent 9,931,352)
`PGR2019-00027 (Patent 10,039,774)
`PGR2019-00028 (Patent 10,052,338)
`
`
`ORDERED that the Patent Owner’s and Petitioner’s requests for oral
`argument is granted subject to the conditions set forth in this Order; and
`FURTHER ORDERED that such oral argument, conducted pursuant
`to the procedures outlined above, shall commence at 1:00 pm Eastern Time
`on April 24, 2020.
`
`
`
`
`
`
`
`7
`
`
`
`PGR2019-00026 (Patent 9,931,352)
`PGR2019-00027 (Patent 10,039,774)
`PGR2019-00028 (Patent 10,052,338)
`
`For PETITIONER:
`
`Daniel Minion
`Bruce Haas
`VENABLE LLP
`dminion@venable.com
`bchaas@venable.com
`
`For PATENT OWNER:
`
`Brent Johnson
`R. Parrish Freeman
`MASCHOFF BRENNAN
`bjohnson@mabr.com
`pfreeman@mabr.com
`
`
`8
`
`
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