Trials@uspto.gov
`571-272-7822
`
`Paper 43
`Entered: July 2, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00880
`Patent 7,490,749 B2
`_______________
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`571-272-7822
`
`Paper 43
`Entered: July 2, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`v.
`ETHICON LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00880
`Patent 7,490,749 B2
`_______________
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`
`Petitioner and Patent Owner both request an opportunity to present
`oral argument pursuant to 37 C.F.R. § 42.70. Papers 33, 30. The requests
`are granted to the extent set forth below and subject to the following
`conditions.
`Oral arguments will commence at 9:00 AM Eastern Time on
`Thursday, July 9, 2020, by video. The parties are directed to contact the
`Board at least 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.
`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
`PTABHearings@uspto.gov 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 email
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`
`
`2
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`address five business days prior to the hearing to receive dial-in connection
`information.
`Petitioner requests 30 minutes for argument. Paper 33, 1. Patent
`Owner requests 45 minutes for argument. Paper 30, 1. Accordingly, the
`Board determines that each party shall be allotted 45 minutes of total time to
`present argument. Petitioner bears the ultimate burden of proof that the
`patent claims at issue are unpatentable. Therefore, Petitioner will open the
`hearing by presenting its case regarding the challenged claims for which we
`instituted trial. Petitioner may reserve some of its argument time for
`rebuttal. Absent special circumstances, Petitioner will not be permitted to
`reserve for rebuttal more than half the total time allotted for argument.
`Thereafter, Patent Owner will respond to Petitioner’s presentation and
`present its argument regarding its motion to amend. Patent Owner also may
`reserve some of its argument time for a brief sur-rebuttal.
`Either party may request a pre-hearing conference. See Consolidated
`Trial Practice Guide November 2019, 82 (“The purpose of the pre-hearing
`conference is to afford the parties the opportunity to preview (but not argue)
`the issues to be discussed at the oral hearing, and to seek the Board’s
`guidance as to particular issues that the panel would like addressed by the
`parties.”). If either party desires a pre-hearing conference, the parties should
`jointly contact the Board by July 6, 2020 to request a conference call for that
`purpose.
`Demonstrative exhibits used at the final hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. For
`example, each slide of a demonstrative exhibit may be marked with the
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`
`
`
`
`3
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`Demonstrative exhibits must not include new evidence and each must
`include citations to the record sufficient to establish that the exhibit contains
`no new argument or evidence not already of record in the proceeding(s) in
`which it is offered. The parties are directed to serve demonstrative exhibits
`on opposing counsel at least seven days before the hearing date. As all
`members of the panel will attend the hearing electronically from a remote
`location, it is necessary that the parties provide a copy of any demonstrative
`exhibits to the Board at least seven days prior to the hearing by emailing
`them to PTABHearings@uspto.gov. Notwithstanding 37 C.F.R. § 42.70(b),
`the parties shall not file any demonstrative exhibits in the record of this
`proceeding without prior authorization from the Board.
`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 demonstrative
`exhibits with the Board at least four days before the hearing. Any objection
`to demonstrative exhibits that is not timely presented will be considered
`waived. The objections should identify with particularity which
`demonstratives are subject to objection and include a short (one sentence or
`less) statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider the objections and
`schedule a conference call if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until the oral argument. 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,
`
`
`
`
`4
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`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 days before the
`hearing.
`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 clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. The parties are also
`advised to identify themselves each time they speak. Furthermore, the
`remote nature of the oral hearing may result in an audio lag, so the parties
`are advised to observe a pause prior to speaking 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
`
`
`
`
`5
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`Board by contacting PTABHearings@uspto.gov at least five business days
`prior to the oral hearing date.
`Accordingly, it is:
`ORDERED that the parties’ requests for oral hearing (Papers 33 and
`30) are granted subject to the conditions set forth in this Order; and
`FURTHER ORDERED that oral hearing, conducted pursuant to the
`procedures outlined above, shall commence at 9:00 AM Eastern Time on
`July 9, 2020.
`
`
`
`
`
`
`
`6
`
`
`
`IPR2019-00880
`Patent 7,490,749 B2
`
`PETITIONER:
`Steven R. Katz
`Joshua A. Griswold
`Kenneth W. Darby, Jr.
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`katz@fr.com
`griswold@fr.com
`kdarbyfr.com
`phillips@fr.com
`
`PATENT OWNER:
`Anish R. Desai
`Elizabeth Stotland Weiswasser
`Adrian Percer
`Christopher T. Marando
`Christoper M. Pepe
`WEIL, GOTSCHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`adrian.percer@weil.com
`christopher.marando@weil.com
`christopher.pepe@weil.com
`
`
`
`
`
`
`7
`
`
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