Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
`Paper 44
`Entered: September 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NUEVOLUTION A/S,
`Petitioner,
`
`v.
`
`CHEMGENE HOLDING APS,
`Patent Owner.
`_____________
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
` IPR2017-01603 (Patent 8,951,728 B2)1
`_______________
`
`Before ROBERT A. POLLOCK and TIMOTHY G. MAJORS,
`Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each of the
`three related cases. The parties are not authorized to use this style of
`heading.
`
`
`571.272.7822
`
`
`
`
`
`
`
`
`Paper 44
`Entered: September 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NUEVOLUTION A/S,
`Petitioner,
`
`v.
`
`CHEMGENE HOLDING APS,
`Patent Owner.
`_____________
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
` IPR2017-01603 (Patent 8,951,728 B2)1
`_______________
`
`Before ROBERT A. POLLOCK and TIMOTHY G. MAJORS,
`Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each of the
`three related cases. The parties are not authorized to use this style of
`heading.
`
`
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
`IPR2017-01603 (Patent 8,951,728 B2)
`
`
`Introduction
`
`This Order replaces and supersedes the Sept. 7, 2018 Order Granting
`
`Request for Oral Argument in the above-captioned cases. See, e.g.,
`
`IPR2017-01598, Paper 41 (“Sept. 7 Hearing Order”).
`
`On August 22, 2018, Petitioner and Patent Owner requested oral
`
`hearing pursuant to 37 C.F.R. § 42.70. See, e.g., IPR2017-01598, Papers 37
`
`and 38. The Board granted the parties’ requests and set the oral hearing for
`
`Sept. 18, 2018 as provided in Scheduling Order (see, e.g., IPR2017-01598,
`
`Paper 17) and the Sept. 7 Hearing Order in these proceedings.
`
`After the Sept. 7 Hearing Order was entered, the parties informed the
`
`Board that Patent Owner sought to withdraw its request for oral hearing, and
`
`that Patent Owner preferred to have Petitioner’s challenges be decided on
`
`the papers and to avoid the expense of preparing for and conducting the oral
`
`hearing. See, e.g., IPR2017-01598, Paper 42 (Notice of Stipulation and
`
`Proposed Order).2 A conference between the parties and the Board was held
`
`on Sept. 10, 2018 to discuss these matters. Although Petitioner did not
`
`oppose Patent Owner’s request to withdraw Patent Owner’s request for oral
`
`hearing, Petitioner indicated that was not withdrawing its own request for
`
`oral hearing at that time. Id. at 1–2. Patent Owner’s request to withdraw the
`
`request for oral hearing has been granted. See, e.g., IPR2017-01598, Paper
`
`43. During the conference, the Board informed the parties that, insofar as
`
`
`2 Concurrent with its request to withdraw Patent Owner’s request for oral
`hearing, Patent Owner also informed the Board that Patent Owner sought to
`withdraw its Contingent Motions to Amend in IPR2017-01598, IPR2017-
`01599, and IPR2017-01603. See, e.g., IPR2017-01598, Paper 42 (Notice of
`Stipulation and Proposed Order).
`
`2
`
`
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
`IPR2017-01603 (Patent 8,951,728 B2)
`
`Petitioner maintained its request, the Board was inclined to proceed with the
`
`oral hearing on Sept. 18 as scheduled. If the oral hearing did so proceed,
`
`counsel for Patent Owner expressed uncertainty whether they would appear
`
`at the hearing. Although the Board informed counsel that it would not
`
`penalize Patent Owner if its counsel elected not to appear at the oral hearing,
`
`the Board indicated that it would allow Petitioner to make its oral arguments
`
`on an ex parte basis, after which the hearing would conclude.
`
`Petitioner was instructed to inform the Board by Sept. 13 whether, in
`
`fact, Petitioner wanted to maintain its request and proceed with the oral
`
`hearing. Petitioner has now informed the Board via email (copying Patent
`
`Owner’s counsel) that Petitioner is maintaining its request for oral hearing.
`
`Petitioner’s request for oral hearing is granted as provided below.
`
`Time and Format
`
`Oral argument will begin at 1:00 PM Eastern Time on September
`
`18, 2018, on the ninth floor of the Madison Building East, 600 Dulany
`
`Street, Alexandria, Virginia. The Board was not able to accommodate
`
`Petitioner’s request (see, e.g., IPR2017-01598, Paper 37, 3) that the
`
`argument be held in Hearing Room A and, accordingly, the hearing will be
`
`held in Hearing Room B. The hearing will be open to the public for in-
`
`person attendance, which will be accommodated on a first come, first served
`
`basis.
`
`Each side will have a total of 60 minutes to present its arguments
`
`related to all three petitions. Petitioner will open the hearing and may
`
`present arguments regarding the challenged claims for which the Board
`
`instituted trial and its Motion(s) to Exclude. Patent Owner will then be
`
`3
`
`
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
`IPR2017-01603 (Patent 8,951,728 B2)
`
`given an opportunity to respond to Petitioner’s arguments. Petitioner and
`
`Patent Owner may each reserve up to 20 minutes of rebuttal time and sur-
`
`rebuttal time respectively for arguments presented during the hearing.3
`
`The Board will provide a court reporter for the hearing and the
`
`reporter’s transcript will constitute the official record of the hearing. There
`
`will be only one transcript, which will be entered into each case. If an
`
`argument is not applicable to all cases, the presenter should clearly state
`
`which case the argument is directed to.
`
`Demonstratives
`
`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). Notwithstanding 37 C.F.R.
`
`§ 42.70(b), each party shall, instead of filing, provide a courtesy copy of the
`
`demonstrative exhibits to the Board at least three full business days prior to
`
`the hearing by emailing them to Trials@uspto.gov.
`
`Any argument presented in the demonstrative exhibits must be
`
`supported by evidence already of record. The demonstrative exhibits,
`
`however, are not evidence. Instead, they are intended to assist the parties in
`
`presenting their oral arguments to the Board. Also, the demonstrative
`
`exhibits are not a mechanism for making arguments not previously
`
`presented. The panel will not consider arguments or evidence appearing
`
`only in demonstrative exhibits. The parties are directed to St. Jude Medical,
`
`
`3 As indicated in the Board’s Order dated July 20, 2018 (see, e.g., IPR2017-
`01598, Paper 30), the parties will also be permitted to argue during this
`phase of the hearing that certain argument and/or evidence should or should
`not be considered in these proceedings under 37 C.F.R. § 42.23(b).
`
`4
`
`
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
`IPR2017-01603 (Patent 8,951,728 B2)
`
`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.
`
`Due to the nature of the demonstrative exhibits, the panel does not
`
`anticipate that objections to such exhibits would likely be sustained.
`
`Nevertheless, to the extent that there is any objection to the propriety of the
`
`demonstrative exhibits, the parties shall meet and confer in good faith to
`
`resolve any issue. If the parties cannot resolve the issues regarding the
`
`demonstrative exhibits on their own, the objecting party may file a one-page
`
`list of its objections to the demonstrative exhibits with the Board at least
`
`three full business days before the hearing. The objecting party should
`
`identify with particularity which portions of the demonstrative exhibits it
`
`objects to, and include a one-sentence statement of the reason for each
`
`objection. No argument or further explanation is permitted. The panel will
`
`schedule a conference call if necessary. Any objection to demonstrative
`
`exhibits that is not timely presented will be considered waived.
`
`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. When introducing a demonstrative slide relating to
`
`information subject to a motion to exclude or strike or other objection,
`
`counsel will briefly note that status on the oral record.
`
`Lead Counsel
`
`Except as provided herein, the Board expects lead counsel for each
`
`party presenting arguments to be present at the oral hearing, although any
`
`5
`
`
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
`IPR2017-01603 (Patent 8,951,728 B2)
`
`counsel of record may present the party’s argument. If either lead counsel is
`
`unable to be present at the hearing, the Board shall be advised by email no
`
`later than two business days prior to the oral hearing, and such lead counsel
`
`shall be available for a conference call if necessary. Patent Owner shall also
`
`advise the Board and Petitioner by email no later than 5pm Eastern on
`
`Friday, Sept. 14, 2018 whether any of Patent Owner’s counsel of record in
`
`these proceedings will appear for the oral hearing and whether such counsel
`
`plans to appear in person or through other means (i.e., videoconference
`
`and/or by telephone). If Patent Owner’s counsel plans to appear in a
`
`manner other than in person, Patent Owner should promptly seek to
`
`make arrangements for such appearance by contacting the Board at
`
`Trials@uspto.gov for further information. Although the Board will
`
`work to accommodate a request by Patent Owner for an alternative to
`
`in-person appearance at the oral hearing, the Board cannot guarantee
`
`that such alternative appearance will be available and/or free from
`
`technical impediment.
`
`Audio/Visual Equipment Requests
`
`Questions regarding specific audio-visual equipment should be
`
`directed to the Board at (571) 272-9797. Requests for audio-visual
`
`equipment must be made five business days prior to the hearing date.
`
`The request is to be sent to Trials@uspto.gov. If the request is not
`
`received timely, the equipment may not be available on the day of the
`
`hearing.
`
`
`
`
`
`
`
`6
`
`
`
`IPR2017-01598 (Patent 8,168,381 B2)
`IPR2017-01599 (Patent 8,168,381 B2)
`IPR2017-01603 (Patent 8,951,728 B2)
`
`PETITIONER:
`
`Andrew Larsen
`alarsen@merchantgould.com
`
`Christopher Sorenson
`csorenson@merchantgould.com
`
`
`PATENT OWNER:
`
`Kerry Taylor
`2kst@knobbe.com
`
`Eric Furman
`2esf@knobbe.com
`
`Nathanael Luman
`2nrl@knobbe.com
`
`
`7
`
`
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