Trials@uspto.gov Paper No. 47
` Filed: June 25, 2018
`571.272.7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2017-00022
`Patent 9,408,862 B2
`____________
`
`Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
` Filed: June 25, 2018
`571.272.7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRÜNENTHAL GMBH,
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`____________
`
`Case PGR2017-00022
`Patent 9,408,862 B2
`____________
`
`Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`PGR2017-00022
`Patent 9,408,862 B2
`
`
`
`Patent Owner and Petitioner request an oral hearing pursuant to
`37 C.F.R. § 42.70. Papers 44, 45. Each party requests one hour of total time
`to present argument. Paper 44, 1; Paper 45, 3. The requests are granted to
`the extent set forth below and subject to the following conditions.
`Oral argument shall commence at 1:00 PM Eastern Time on July 24,
`2018, on the 9th floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia. Each party will have one hour 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.
`Patent Owner has filed a motion to amend the challenged claims.
`After Petitioner’s presentation, therefore, Patent Owner will respond to
`Petitioner’s argument and also argue in support of its motion to amend.
`Each side may reserve time to respond to arguments presented by the
`other side with some limitations. More specifically, to the extent that
`Petitioner reserves rebuttal time, it may respond to Patent Owner’s
`presentation on all matters. To the extent that Patent Owner reserves
`rebuttal time, however, it may respond only to Petitioner’s arguments
`opposing the motion to amend, and/or to arguments presented by Petitioner
`in relation to secondary considerations of obviousness.
`
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript shall constitute the official record of the hearing. The
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. If the parties have any
`concern about disclosing confidential information, they are requested to
`
`2
`
`
`
`PGR2017-00022
`Patent 9,408,862 B2
`
`
`contact the Board at least five (5) days in advance of the hearing to discuss
`the matter.
`
`Demonstrative exhibits are not evidence sufficient to prove underlying
`facts, but, rather, serve as visual aids to facilitate the presentation of
`argument at an oral hearing. See Duncan v. Dep’t of the Air Force, 674 F.3d
`1359, 1363 (Fed. Cir. 2012) (discussing the nature and proper purpose of
`demonstrative exhibits). 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 five (5) business days
`before the hearing date. Please also provide a courtesy copy of any
`demonstrative exhibits to the Board at least five (5) business days prior to
`the hearing by emailing them to Trials@uspto.gov. The parties are
`directed to refrain from filing demonstrative exhibits in the record of
`this proceeding.
`
`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 two (2) business 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
`
`3
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`PGR2017-00022
`Patent 9,408,862 B2
`
`
`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,
`2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`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. If a demonstrative exhibit is not made available or visible to the
`judge(s) presiding over the hearing remotely, that demonstrative will not be
`considered. Counsel 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 for
`the benefit of the judge(s) presiding over the hearing remotely.
`
`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. However, any counsel of record may present the party’s
`argument. If either party expects that its lead counsel will not attend the oral
`hearing, 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.
`
`Both parties request permission to use certain audio/visual equipment
`to display exhibits during the oral hearing. Paper 44, 2; Paper 45, 3. Those
`requests, and any other special requests for audiovisual equipment, should
`be directed to Trials@uspto.gov. Requests for special equipment will not be
`
`4
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`PGR2017-00022
`Patent 9,408,862 B2
`
`
`honored unless presented in a separate communication not less than five
`days before the hearing, directed to the above email address.
`
`
`It is
`ORDERED that the parties’ requests for oral hearing 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 1:00 PM Eastern Time on
`July 24, 2018.
`
`5
`
`
`
`
`
`PGR2017-00022
`Patent 9,408,862 B2
`
`PETITIONER:
`
`Bruce C. Haas
`Justin J. Oliver
`FITZPATRICK, CELLA, HARPER & SCINTO
`bhaas@fchs.com
`joliver@fchs.com
`
`
`PATENT OWNER:
`
`Brent A. Johnson
`R. Parrish Freeman
`Michael A. Katz
`MASCHOFF BRENNAN, PLLC
`bjohnson@mabr.com
`pfreeman@mabr.com
`mkatz@mabr.com
`
`6
`
`
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