Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 63
` Entered: April 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_______________
`Case IPR2015-00902 (Patent 8,669,290 B2)
`Case IPR2015-00903 (Patent 8,129,431 B2)1
`_______________
`
`
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`
`OBERMANN, Administrative Patent Judge.
`
`
`HEARING ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 IPR2015-01871 has been joined with IPR2015-00903. This Order
`addresses issues common to all cases identified in the caption.
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 63
` Entered: April 6, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`INNOPHARMA LICENSING, INC., INNOPHARMA LICENSING LLC,
`INNOPHARMA INC., INNOPHARMA LLC,
`MYLAN PHARMACEUTICALS INC., and MYLAN INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`_______________
`Case IPR2015-00902 (Patent 8,669,290 B2)
`Case IPR2015-00903 (Patent 8,129,431 B2)1
`_______________
`
`
`
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`
`OBERMANN, Administrative Patent Judge.
`
`
`HEARING ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 IPR2015-01871 has been joined with IPR2015-00903. This Order
`addresses issues common to all cases identified in the caption.
`
`
`
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`
`The parties filed a joint request for an oral hearing pursuant to 37
`
`C.F.R. § 42.70. Paper 61, 1.2 The parties request a consolidated hearing for
`
`these proceedings, “which involve some common parties and related
`
`patents.” Id. We grant the parties’ request for an oral hearing of “two hours
`
`total” in duration, subject to the following conditions. Id.
`
`The hearing will commence at 10:00 AM Eastern Standard Time on
`
`April 19, 2016, on the ninth floor of Madison Building East, 600 Dulany
`
`Street, Alexandria, VA. The Board will provide a court reporter for the
`
`hearing, and the transcript will constitute the official record of the hearing.
`
`Each party shall have 60 minutes of total argument time. Petitioner
`
`bears the ultimate burden of proof that the patent claims at issue are
`
`unpatentable. Petitioner will proceed first and, pursuant to the parties’
`
`agreement, shall have 45 minutes to present its case with regard to the
`
`challenged claims. Id. at 2–3. Patent Owner shall then have 60 minutes to
`
`respond to Petitioner’s case. After that, Petitioner shall have 15 minutes of
`
`rebuttal time to reply to Patent Owner’s arguments. Any argument or
`
`evidence presented by a party at the consolidated oral hearing shall be
`
`applied only in a proceeding in which the record provides a proper
`
`foundation for such argument or evidence.
`
`Patent Owner requests additional hearing time to present arguments
`
`relating to motions to exclude, whereas Petitioner does not believe that a
`
`hearing on such motions is necessary. Id. at 2. Either party is free to
`
`dedicate a portion of their allotted time to procedural issues, including
`
`motions to exclude and objections; however, no additional time shall be
`
`
`2 The requests filed in each proceeding are substantially identical. For
`convenience, we refer to the paper filed in IPR2015-00902.
`
`
`
`
`2
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`provided for those purposes. Petitioner is reminded that rebuttal time may
`
`not be used to raise new issues, but shall be limited strictly to responding to
`
`arguments raised and discussed by Patent Owner.
`
`The oral hearing shall be open to the public for in-person attendance.
`
`To the extent that counsel for any party intends to present arguments related
`
`to information filed under seal, counsel shall not, at oral argument, reveal
`
`such sealed information. Instead, counsel shall make reference to such
`
`information without actually disclosing the information.
`
`The parties both seek to reserve seats in the hearing room. Id. at 3.
`
`Due to hearing room scheduling constraints, however, the hearing room
`
`assigned to these proceedings may not have capacity to accommodate all
`
`twenty (20) anticipated attendees identified in the request. Id. In-person
`
`attendance shall be accommodated on a first-come, first-served basis.
`
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`
`v. The Board of Regents of the University of Michigan, Case IPR2013-00041
`
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`
`content of demonstrative exhibits. See also CBS Interactive Inc. v. Helferich
`
`Patent Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013)
`
`(Paper 118) (The Board has discretion to limit the parties’ demonstratives to
`
`pages in the record should there be no easy resolution to objections over
`
`demonstratives.).
`
`Demonstrative exhibits, if any, must be served no later than five
`
`business days before the hearing. 37 C.F.R. § 42.70(b). The parties are
`
`instructed, however, to refrain from filing any demonstrative exhibits in
`
`these proceedings. The parties shall provide a courtesy copy of any
`
`
`
`
`3
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`demonstrative exhibits to the Board no later than two business days prior to
`
`the hearing by emailing them to Trials@uspto.gov.
`
`The parties shall confer with each other regarding any objections to
`
`demonstrative exhibits in each proceeding. The parties are instructed to
`
`refrain from raising unreasonable objections to demonstrative exhibits.
`
`Specifically, the panel is capable of distinguishing evidence and arguments
`
`that are of record from those that are not. Any final decisions issued in these
`
`proceedings will incorporate only evidence and argument that are of record
`
`in these proceedings.
`
`For any issue that cannot be resolved after conferring, the parties may
`
`file jointly a one-page list of objections at least three business days prior to
`
`the hearing. The list should identify with particularity which demonstrative
`
`exhibits are subject to objection and include a short statement (no more than
`
`one sentence) of the reason for each objection. No argument or further
`
`explanation is permitted. The Board will consider the objections and
`
`schedule a telephone conference if deemed necessary.
`
`Any objection to demonstrative exhibits that is not timely presented
`
`will be deemed waived. Neither party shall be permitted to interrupt their
`
`opponent’s presentation to lodge objections to demonstrative exhibits during
`
`the oral hearing. A hard copy of the demonstratives should be provided to
`
`the court reporter at the hearing.
`
`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 no later than 5 days in advance of the hearing date. The
`
`request is to be sent directly to Trials@uspto.gov. If the request is not
`
`received timely, the equipment may not be available on the day of the
`
`
`
`
`4
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`hearing. The parties are reminded that the 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.
`
`The Board expects lead counsel for each party to be present in person
`
`at the oral hearing. However, lead or backup counsel may present the
`
`party’s argument. If either party anticipates that its lead counsel will not be
`
`attending the oral hearing, the parties should initiate a joint telephone
`
`conference with the Board no later than two business days prior to the oral
`
`hearing to discuss the matter.
`
`
`
`It is
`
`ORDERED that oral arguments in this proceeding shall take place
`
`beginning at 10:00 AM Eastern Standard Time on April 19, 2016, on the
`
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`
`Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2015-00902 (Patent 8,669,290 B2)
`IPR2015-00903 (Patent 8,129,431 B2)
`
`PETITIONER:
`
`Jitendra Malik
`Bryan L. Skelton
`Lance Soderstrom
`ALSTON & BIRD LLP
`Jitty.Malik@alston.com
`bryan.skelton@alston.com
`lance.soderstrom@alston.com
`
`Jonathan Lindsay
`Shannon Lintz
`CROWELL & MORING LLP
`jLindsay@Crowell.com
`SLentz@Crowell.com
`
`PATENT OWNER:
`
`Bryan Diner
`M. Andrew Holtman
`Justin Hasford
`Jonathan R. Stroud
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`bryan.diner@finnegan.com
`andy.holtman@finnegan.com
`justin.hasford@finnegan.com
`jonathan.stroud@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
`
`6
`
`
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