Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Entered: December 27, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GENOME & COMPANY,
`Petitioner,
`
`v.
`
`THE UNIVERSITY OF CHICAGO,
`Patent Owner.
`
`Case PGR2019-00002
`Patent 9,855,302 B2
`
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, SUSAN L.C. MITCHELL, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`SCHNEIDER, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`571-272-7822
`
`Paper 32
`Entered: December 27, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GENOME & COMPANY,
`Petitioner,
`
`v.
`
`THE UNIVERSITY OF CHICAGO,
`Patent Owner.
`
`Case PGR2019-00002
`Patent 9,855,302 B2
`
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, SUSAN L.C. MITCHELL, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`SCHNEIDER, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`PGR2019-00002
`Patent 9,855,302 B2
`
`
`Petitioner and Patent Owner both request an oral hearing pursuant to
`
`37 C.F.R. § 42.70. Papers 27 and 28. The requests are granted to the extent
`
`set forth below and subject to the following conditions.
`
`Oral arguments will commence at 1:00 PM Eastern time on
`
`January 15, 2020, at the USPTO Headquarters on the ninth floor of Madison
`
`Building East, 600 Dulany Street, Alexandria, Virginia. The hearing will be
`
`open to the public for in-person attendance that will be accommodated on a
`
`first-come, first-served basis. 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. To facilitate planning, each party must send an email
`
`message to PTABHearings@uspto.gov five days prior to the hearing if the
`
`number planning to attend the hearing in-person for its side (attorneys and
`
`others) exceeds five people.
`
`Petitioner and Patent Owner both request sixty minutes for argument.
`
`Papers 27 and 28. Accordingly, the Board determines that each party shall
`
`be allotted sixty (60) 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, a 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
`
`
`
`
`2
`
`
`
`IPR2018-00295
`Patent 9,320,765 B2
`
`motion to amend. Patent Owner also may reserve some of its argument time
`
`for a brief sur-rebuttal.
`
`The Board’s August 2018 Trial Practice Guide Update (“TPGU”)
`
`provides an opportunity for the parties to request a pre-hearing conference.
`
`See TPGU 19 (“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
`
`January 8, 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.
`
`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 (7) days before the hearing date. Please
`
`also provide a courtesy copy of any demonstrative exhibits to the Board at
`
`least seven (7) 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
`
`
`
`
`3
`
`
`
`IPR2018-00295
`Patent 9,320,765 B2
`
`cannot be resolved, the parties may file any objections to demonstrative
`
`exhibits with the Board at least four (4) 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, 2014) (Paper 65), for guidance regarding the appropriate content
`
`of demonstrative exhibits.
`
`One member of the panel will attend the hearing electronically from a
`
`remote location and will not be able to view the projection screen in the
`
`hearing room. If a demonstrative exhibit is not made available prior to the
`
`hearing so that a judge appearing remotely has access to the demonstrative,
`
`that demonstrative may not be presented at the hearing. Counsel must
`
`identify clearly and specifically each demonstrative exhibit (e.g., by slide or
`
`page number) referenced during the hearing to ensure the clarity and
`
`
`
`
`4
`
`
`
`IPR2018-00295
`Patent 9,320,765 B2
`
`accuracy of the reporter’s transcript and for the benefit of the judge(s)
`
`presiding over the hearing remotely.
`
`The Board generally expects lead counsel for each party to be present
`
`in person at the oral hearing. Any counsel of record may present the party’s
`
`argument as long as that counsel is present in person.
`
`A party may also request remote video attendance for one or more of
`
`its other attendees to view the hearing from any USPTO location. To
`
`request remote video viewing, a party must send an email message to
`
`PTABHearings@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
`
`PTABHearings@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
`
`It is ORDERED that the parties’ requests for oral hearing (Papers 27
`
`and 28) 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
`
`January 15, 2020.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00295
`Patent 9,320,765 B2
`
`PETITIONER:
`
`John A. Bauer
`Kongsik Kim
`MINTZ, LEVIN, COHN, FERRIS GLOVESKY AND POPEO, P.C.
`John.Bauer@mintz.com
`KKim@mintz.com
`
`PATENT OWNER:
`
` Scott E. Kamholtz
`Jennifer L. Robbins
`COVINGTON & BURLING LLP
`skamholz@cov.com
`jrobbins@cov.com
`
`
`
`
`6
`
`
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