Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 39
`Entered: June 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`OSI PHARMACEUTICALS, LLC,
`and GENENTECH, INC.,
`
`Petitioner,
`
`v.
`
`ARCH DEVELOPMENT CORP. and
`DANA-FARBER CANCER INSTITUTE, INC.,
`
`Patent Owner.
`____________
`
`Case IPR2016-01034
`Patent 7,838,512 B1
`____________
`
`
`Before TINA E. HULSE and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
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`Case IPR2016-01034
`Patent 7,838,512 B1
`
`Petitioner and Patent Owner requested oral hearing pursuant to 37 C.F.R.
`§ 42.70 in the above-referenced proceeding. Papers 35, 36. The parties’ requests
`for oral hearing are granted.
`The proceeding will commence at 1:00 PM on June 20, 2017, on the ninth
`floor of the Madison Building East, 600 Dulany Street, Alexandria, Virginia. The
`Board will provide a court reporter for the hearing and the reporter’s transcript will
`constitute the official record of the hearing.
`The hearing room can accommodate the lead counsel and a back-up counsel
`for each party. Other members of the parties will be accommodated, based on
`space availability, on a first-come, first-served basis. The hearing will be open to
`the public for in-person attendance that also will be accommodated on a first-come,
`first-served basis.
`Each party will have sixty (60) minutes of total oral argument time.
`Petitioner bears the ultimate burden of proof that the patent claims at issue in this
`review are unpatentable. Petitioner, therefore, will proceed first to present its case
`regarding the pending grounds of unpatentability. Thereafter, Patent Owner will
`have the opportunity to respond to Petitioner’s arguments. If desired, Petitioner
`may reserve rebuttal time to respond to arguments presented by Patent Owner.
`Patent Owner may not reserve rebuttal time.
`At least seven (7) business days before the hearing date, 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). The parties also shall provide a courtesy copy
`of any demonstrative exhibits to the Board at least three (3) business days before
`the hearing by emailing them to Trials@uspto.gov. Absent prior authorization, the
`parties shall not file any demonstrative exhibit(s) with the Board.
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`Case IPR2016-01034
`Patent 7,838,512 B1
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`Demonstrative exhibits are not evidence, but are intended to assist the
`parties in presenting their oral arguments to the Board. Demonstrative exhibits
`may not introduce new evidence or raise new argument but, instead, should cite to
`evidence in the record. The parties are directed to St. Jude Medical, Cardiology
`Division, Inc. v. The Board of Regents of the University of Michigan, IPR2013-
`00041 (PTAB January 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits.
`The Board expects that the parties will meet and confer in good faith to
`resolve any objections to demonstrative exhibits. For any objections that cannot be
`resolved after conferring, the parties may file jointly a one-page list of objections
`at least three (3) business days before the oral hearing. The list shall identify with
`particularity the portions of the demonstrative exhibits that are subject to objection
`and include a one-sentence statement of the basis 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 until the oral argument. Any objection to demonstrative
`exhibits that is not presented timely will be considered waived. Neither party shall
`be permitted to interrupt their opponent’s presentation to lodge objections to
`demonstrative exhibits during the oral hearing.
`Each party shall provide a hard copy of its demonstrative exhibits to the
`court reporter at the hearing. The parties also should note that at least one member
`of the panel will be attending the hearing electronically from a remote location,
`and that if a demonstrative is not made fully available or visible to the judge
`participating in the hearing remotely, that demonstrative will not be considered.
`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
`
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`Case IPR2016-01034
`Patent 7,838,512 B1
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`hearing to ensure the clarity and accuracy of the court reporter’s transcript and the
`ability of the judge participating in the hearing remotely to closely follow the
`presenter’s arguments.
`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. If
`either party expects 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.
`Questions regarding specific audio-visual equipment shall be directed to the
`Board at 571-272-9797. Requests for audio-visual equipment are to be made no
`later than five (5) days before the oral hearing date in an email communication to
`Trials@uspto.gov. If a request is not received timely, the equipment may not be
`available on the day of the oral hearing.
`
`Accordingly, it is
`ORDERED that oral hearing, conducted pursuant to the procedures outlined
`above, shall commence at 1:00 PM EST on June 20, 2017, on the ninth floor of the
`Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`
`PETITIONER:
`David Cavanaugh
`david.cavanaugh@wilmerhale.com
`
`Heather Petruzzi
`heather.petruzzi@wilmerhale.com
`
`Emily R. Whelan
`emily.whelan@wilmerhale.com
`
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`Case IPR2016-01034
`Patent 7,838,512 B1
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`
`Matthew Kreeger
`mkreeger@mofo.com
`
`Matthew Chivvis
`mchivvis@mofo.com
`
`
`PATENT OWNER:
`DeAnn F. Smith
`dsmith@foleyhoag.com
`
`Peter Sullivan
`psullivan@foleyhoag.com
`
`
`
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