Trials@uspto.gov Paper No. 53
`571-272-7822 Entered: March 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KVK-TECH, INC.,
`Petitioner,
`
`v.
`
`SHIRE PLC,
`Patent Owner.
`____________
`
`Case IPR2018-00290 (Patent 8,846,100 B2)
`Case IPR2018-00293 (Patent 9,173,857 B2)1
`____________
`
`
`Before RAMA G. ELLURU, SHERIDAN K. SNEDDEN, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This Order addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order, entered in each
`proceeding. The parties, however, are not authorized to use this joint
`heading and filing style in their papers.
`
`
`571-272-7822 Entered: March 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KVK-TECH, INC.,
`Petitioner,
`
`v.
`
`SHIRE PLC,
`Patent Owner.
`____________
`
`Case IPR2018-00290 (Patent 8,846,100 B2)
`Case IPR2018-00293 (Patent 9,173,857 B2)1
`____________
`
`
`Before RAMA G. ELLURU, SHERIDAN K. SNEDDEN, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This Order addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order, entered in each
`proceeding. The parties, however, are not authorized to use this joint
`heading and filing style in their papers.
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`
`Patent Owner and Petitioner have each filed requests for oral hearing
`in the above-captioned proceedings, pursuant to 37 C.F.R. § 42.70.
`IPR2018-00290, Papers 44, 45.2 In its request, Patent Owner proposes that
`each party be allocated ninety (90) minutes to present its argument in each of
`the above-captioned proceedings. Paper 44, 1. In its request, Petitioner
`proposes that each party be allocated sixty (60) minutes to present argument
`in each of the above-captioned proceedings. Paper 45, 2. By e-mail dated
`March 20, 2019, Petitioner indicated that although Patent Owner initially
`requested 90 minutes for oral argument, Patent Owner agrees to 60 minutes
`of oral argument for each side. We grant the requests for oral argument
`according to the terms set forth in this Order.
`The oral hearings for the above-captioned proceedings will be
`combined, and the combined oral hearing will commence at 10:00 AM
`Eastern Time on Thursday, April 4, 2019, in Hearing Room B on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.3
`Each party will have sixty (60) minutes total time to present its
`arguments in the above-captioned proceedings. Petitioner bears the ultimate
`burden of proof that the claims at issue in these reviews are unpatentable.
`Therefore, at oral argument, Petitioner will proceed first to present its case
`regarding the challenged patent claims and the grounds on which the Board
`instituted trial. Petitioner may reserve some (but not more than half) of its
`allotted time for rebuttal to respond to Patent Owner’s arguments. After
`
`
`2 For convenience, we cite to papers in IPR2018-00290. Similar papers
`were filed in IPR2018-00293 (Papers 42 and 43).
`3 Scheduling Orders in IPR2018-00290 (Paper 16) and IPR2018-00293
`(Paper 14) set April 4, 2019, as the date for oral arguments.
`2
`
`
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`Petitioner’s initial presentation, Patent Owner will be given an opportunity
`to respond. Thereafter, Petitioner may use any reserved time to respond to
`Patent Owner’s presentation. Lastly, Patent Owner may reserve no more
`than half of its allotted time for sur-rebuttal and may use its reserved time
`for sur-rebuttal to respond to Petitioner’s arguments.
`Both parties filed Motions to Exclude Evidence. Papers 43, 46.4
`Thus, the oral hearing may pertain to the subject of evidence exclusion.
`Patent Owner did not file a Motion to Amend Claims. Thus, the oral hearing
`will not pertain to claim amendments. New arguments not previously
`presented in the parties’ substantive papers in these proceeding shall not be
`raised at oral hearing.
`The hearing will be open to the public for in-person attendance that
`will be accommodated on a first-come, first-served basis. Please be advised,
`available seating is limited. The Board will provide a court reporter, and the
`reporter’s transcript shall constitute the official record of the trial hearing.
`The parties shall serve any demonstrative exhibits on opposing
`counsel at least seven business days before the hearing. The parties shall
`also provide a courtesy copy of any demonstrative exhibits to the Board no
`later than three business days before the hearing, or five business days prior
`to a pre-hearing conference if one is scheduled by emailing them to
`Trials@uspto.gov. In addition, the parties shall file any demonstrative
`exhibits in these proceedings within two days of the hearing. Demonstrative
`exhibits are visual aids to oral argument and not evidence and are intended
`only to assist the parties in presenting their oral argument to the panel. The
`
`
`4 Motions to Exclude Evidence were also filed in IPR2018-00293.
`3
`
`
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`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. Demonstrative exhibits may not 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 should cite to the briefs and evidence in the record.
`The parties shall confer with each other regarding any objections to
`demonstrative exhibits. For any issue that cannot be resolved after
`conferring, the parties may each send by email to Trials@uspto.gov a one-
`page list of objections at least two business days before the hearing if no pre-
`hearing conference is requested or two business days before a pre-hearing
`conference if one is scheduled. The list should identify with particularity
`which demonstrative exhibits are subject to objection and include a short
`statement of the reason for each objection and the reason the other party
`opposes the objection. No argument or further explanation is permitted.
`The Board will consider the objections and, if no pre-hearing conference is
`requested, may schedule a telephone conference if deemed necessary. Any
`objection to demonstrative exhibits that is not timely presented may be
`considered waived.
`The parties are reminded that, at the oral hearing, 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, and to assist Judge Newman who will
`
`
`
`4
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`join the hearing remotely. Judge Newman will be unable to view images
`projected in the hearing room. Similarly, to ensure presenters may be heard
`by Judge Newman, the parties are reminded to speak only when standing at
`the hearing room podium and toward the attached microphone. No live
`testimony from any witness will be taken at the oral argument. The Board
`expects lead counsel for each party to be present in person at the oral
`hearing. Any counsel of record, however, may present the party’s argument.
`If either party anticipates 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 business days prior to the oral hearing to discuss the
`matter.
`The parties may request the use of audio-visual equipment during the
`oral hearing. Such requests should be directed to Trials@uspto.gov at least
`five business days in advance of the hearing date. If the request is not
`received timely, the equipment may not be available on the day of the
`hearing.
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`
`Accordingly, it is
`ORDERED that the oral arguments for IPR2018-00290 and IPR2018-
`00293 will be consolidated,5 and the consolidated oral argument shall take
`place on Thursday, April 4, 2019, in Hearing Room B on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, at 10:00 AM,
`Eastern Time; and
`FURTHER ORDERED that the parties should note that arguments
`made at the consolidated oral hearing shall have application only in
`proceeding(s) the record of which supports the argument.
`
`
`
`
`5 The proceedings, however, have not been consolidated.
`6
`
`
`
`
`
`IPR2018-00290 (Patent 8,846,100 B2)
`IPR2018-00293 (Patent 9,173,857 B2)
`
`
`PETITIONER:
`Steven Roth
`sroth@lmiplaw.com
`
`Thomas Vetter
`tvetter@lmiplaw.com
`
`
`PATENT OWNER:
`Joseph Robinson
`joseph.robinson@troutmansanders.com
`
`Robert Schaffer
`robert.schaffer@troutmansanders.com
`
`Dustin Weeks
`dustin.weeks@troutmansanders.com
`
`
`
`
`
`
`
`7
`
`
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