Trials@uspto.gov Paper No. 27
`Tel: 571-272-7822
`
`Entered: July 17, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`MALLINCKRODT PHARMACEUTICALS IRELAND LIMITED,
`Petitioner,
`
`v.
`
`BIOVIE, INC.,
`Patent Owner.
`
`_____________
`
`Case IPR2018-00974
`Patent 9,655,945 B2
`______________
`
`
`
`Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
`Patent Judge, ERICA A. FRANKLIN, and KRISTI L. R. SAWERT,
`Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`Tel: 571-272-7822
`
`Entered: July 17, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`MALLINCKRODT PHARMACEUTICALS IRELAND LIMITED,
`Petitioner,
`
`v.
`
`BIOVIE, INC.,
`Patent Owner.
`
`_____________
`
`Case IPR2018-00974
`Patent 9,655,945 B2
`______________
`
`
`
`Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
`Patent Judge, ERICA A. FRANKLIN, and KRISTI L. R. SAWERT,
`Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`Case IPR2018-00974
`Patent 9,655,945 B2
`
`
`Petitioner and Patent Owner have each requested an oral hearing for
`the above-captioned proceeding pursuant to 37 C.F.R. § 42.70. Paper 24
`(Petitioner); Paper 23 (Patent Owner). The requests are granted. Oral
`arguments will commence at 1:00 PM Eastern Time on Monday, August 12,
`2019, on the ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia.
`
`Each side will have sixty (60) minutes to present arguments.
`Petitioner bears the ultimate burden of proof that the claims at issue in this
`review are unpatentable. Petitioner will open the hearing by presenting its
`case regarding the challenged claims for which the Board instituted trial.
`Patent Owner will then respond to Petitioner’s arguments. Thereafter, to the
`extent that Petitioner reserves time, Petitioner will then have an opportunity
`to rebut Patent Owner’s presentation. Lastly, to the extent that Patent Owner
`reserves time, Patent Owner may use any time it has reserved for sur-rebuttal
`to respond to Petitioner’s arguments made during reply.
`The hearing will be open to the public for in-person attendance that
`will be accommodated on a first-come, first-served basis. The Board will
`provide a court reporter, and the transcript shall constitute the official record
`of the hearing.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days before the hearing. The parties also shall
`provide the demonstrative exhibits to the Board at least two business days
`prior to the hearing by emailing them to Trials@uspto.gov. Despite the
`requirement in § 42.70(b) for parties to file demonstratives, the parties shall
`not file any demonstrative exhibits in this case without prior authorization
`
`
`
`2
`
`
`
`Case IPR2018-00974
`Patent 9,655,945 B2
`
`from the Board. A hard copy of the demonstratives should be provided to
`the court reporter at the hearing.
`
`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), 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, but
`if such objections cannot be resolved the parties may file any objections to
`demonstratives with the Board at least two business days before the hearing.
`The objections should identify with particularity which portions of the
`demonstrative exhibits are subject to objection, include a copy of the
`objected-to portions, and include a one-sentence statement of the reason 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. Any
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`The parties should be prepared for the possibility that at least one
`member of the panel may attend the hearing electronically from a remote
`location and may not be able to view the projection screen in the hearing
`room. Any demonstrative exhibit that cannot made available or visible to
`the judge(s) presiding remotely should not be presented during the hearing.
`Counsel must identify clearly and specifically each demonstrative exhibit
`(e.g., by slide or screen number) referenced during the hearing to ensure the
`
`
`
`3
`
`
`
`Case IPR2018-00974
`Patent 9,655,945 B2
`
`clarity and accuracy of the reporter’s transcript and for the benefit of the
`judge(s) presiding over the hearing remotely.
`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 as long as that counsel is present in person. 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.
`A party may request remote video attendance for one or more of its
`other attendees to view the hearing from any USPTO location. The
`available locations include the Texas Regional Office in Dallas, Texas; the
`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`in San Jose, CA. To request remote video viewing, a party must send an
`email message to Trials@uspto.gov ten business days prior to the hearing,
`indicating the requested location and the number planning to view the
`hearing from the remote location. The Board will notify the parties if the
`request for video viewing is granted. Note that it may not be possible to
`grant the request due to the availability of resources.
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. A party may also indicate any special requests related to
`appearing at an in-person oral hearing, such as a request to accommodate
`physical needs that limit mobility or 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.
`
`
`
`4
`
`
`
`Case IPR2018-00974
`Patent 9,655,945 B2
`
`
`It is:
`ORDERED that the parties’ requests for oral hearings are granted
`subject to the conditions set forth in this Order; and
`FURTHER ORDERED that oral hearings, conducted pursuant to the
`procedures outlined above, shall commence at 1:00 PM Eastern Time on
`Monday, August 12, 2019.
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2018-00974
`Patent 9,655,945 B2
`
`PETITIONER:
`James P. Murphy
`Jonathan Kirley
`Kevin J. Davis
`POLSINELLI PC
`jpmurphy@polsinelli.com
`mkirley@polsinelli.com
`kdavis@polsinelli.com
`
`PATENT OWNER:
`Patrick Gattari
`Paula Fritsch
`Grantland Drutchas
`Nicole Grimm
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`gattari@mbhb.com
`fritsch@mbhb.com
`drutchas@mbhb.com
`grimm@mbhb.com
`
`
`
`
`6
`
`
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