Trials@uspto.gov
`571.272.7822
`
`
`Paper 51
`Date: May 21, 2020
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALERE INC.,
`Petitioner,
`
`v.
`
`REMBRANDT DIAGNOSTICS, LP,
`Patent Owner.
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`
`37 C.F.R. § 42.70
`
`
`
`
`
`
`571.272.7822
`
`
`Paper 51
`Date: May 21, 2020
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ALERE INC.,
`Petitioner,
`
`v.
`
`REMBRANDT DIAGNOSTICS, LP,
`Patent Owner.
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`This case was remanded from the United States Court of Appeals for
`
`the Federal Circuit for us to consider grounds of unpatentability asserted in
`
`the Petition but not addressed in our Final Written Decision (Paper 39).
`
`In accordance with our Remand Scheduling Order (Paper 44), Petitioner
`
`now requests an oral hearing pursuant to 37 C.F.R. § 42.70. Paper 50. Upon
`
`consideration, Petitioner’s request for oral hearing is granted.
`
`Oral argument will commence at 1:00 PM (ET) on Monday,
`
`June 22, 2020, by video. Each party will have one (1) hour, total, to present
`
`its arguments. See Office Consolidated Trial Practice Guide (November
`
`2019), 81, available at https://www.uspto.gov/TrialPracticeGuide
`
`Consolidated; 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 and 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 respond to
`
`Petitioner’s argument and may reserve time to present sur-rebuttal
`
`arguments. See Office Consolidated Trial Practice Guide, November 2019
`
`Edition, 83. No live testimony from any witness will be taken at the oral
`
`argument.
`
`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.
`
`2
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`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
`
`number five business days prior to the hearing to receive dial-in connection
`
`information.
`
`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 to PTABHearings@uspto.gov. The parties shall not file
`
`any demonstrative exhibits in this case, without prior authorization from the
`
`Board.
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`3
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`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
`
`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
`
`4
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`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
`
`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. 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.
`
`5
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`
`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 themselves each time they
`
`speak. Furthermore, the remote nature of the oral hearing may also result in
`
`an audio lag, 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.
`
`It is
`
`ORDERED that oral argument will commence at 1:00 PM (ET) on
`
`June 22, 2020.
`
`
`
`
`
`
`
`6
`
`
`
`IPR2016-01502
`Patent 6,548,019 B1
`
`PETITIONER:
`
`Amanda Hollis
`Amanda.hollis@kirkland.com
`
`Kourtney Baltzer
`Kourtney.baltzer@kirkland.com
`
`PATENT OWNER:
`
`Joseph Jennings
`2jfj@knobbe.com
`
`Jared Bunker
`2jcb@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
