Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 19
`Entered: January 31, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GRÜNENTHAL GMBH,
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`
`________________________________________
`
`Case PGR2019-00003
`Patent 9,867,839 B2
`________________________________________
`
`
`Before TONI R. SCHEINER, GRACE KARAFFA OBERMANN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 19
`Entered: January 31, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GRÜNENTHAL GMBH,
`Petitioner,
`
`v.
`
`ANTECIP BIOVENTURES II LLC,
`Patent Owner.
`
`________________________________________
`
`Case PGR2019-00003
`Patent 9,867,839 B2
`________________________________________
`
`
`Before TONI R. SCHEINER, GRACE KARAFFA OBERMANN, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`
`I. ORAL ARGUMENT GUIDE
`The Scheduling Order for this case sets the date for oral hearing as
`February 4, 2020, if a hearing is requested and granted by the Board.
`Paper 8. Both parties requested oral hearing pursuant to 37 C.F.R. § 42.70.
`Papers 17 and 18. The requests for oral hearing are granted.
`
`A. Time and Format
`Oral arguments will commence at 10 A.M. Eastern Time on
`February 4, 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 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 prior to the hearing if the number
`planning to attend the hearing in-person for its side (attorneys and others)
`exceeds five (5) people.
`Petitioner will have a combined sixty (60) minutes to present
`argument in this case and Patent Owner will have sixty (60) minutes to
`respond. Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue are unpatentable. Therefore, Petitioner will open the hearing
`by presenting its case regarding the challenged claims for which the Board
`instituted trial. After Petitioner’s presentation, Patent Owner will respond to
`Petitioner’s argument. Petitioner may reserve rebuttal time to respond to
`arguments presented by Patent Owner. In accordance with the Board’s
`
`2
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`August 2018 Trial Practice Guide Update (“TPGU”), Patent Owner may
`reserve time for sur-rebuttal.
`The Trial Practice Guide Update provides an opportunity for the
`parties to request a pre-hearing conference in advance of the hearing. 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 before the
`hearing to request a conference call for that purpose.
`
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstrative exhibits shall be
`served on opposing counsel at least seven (7) business days before the
`hearing. Additionally, in place of filing date provided in § 42.70(b), the
`parties shall file demonstrative exhibits no later than one (1) business day
`before the hearing to allow the panel sufficient time to review the materials.
`Demonstrative exhibits are not a mechanism for making new
`arguments. Demonstrative exhibits also are not evidence, and will not be
`relied upon as evidence. Rather, demonstrative exhibits are visual aids to a
`party’s oral presentation regarding arguments and evidence previously
`presented and discussed in the papers. Accordingly, demonstrative exhibits
`should be clearly marked with the words “DEMONSTRATIVE EXHIBIT –
`NOT EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d
`1364, 1369 (Fed. Cir. 2018) (holding that the Board is obligated under its
`own regulations to dismiss untimely argument “raised for the first time
`during oral argument”); Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`3
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be
`presented at the oral argument.”); see also, St. Jude Medical, Cardiology
`Division, Inc. v. The Board of Regents of the University of Michigan,
`IPR2013-00041, Paper 65, 2–3 (PTAB January 27, 2014) (explaining that
`“new” evidence includes evidence already of record but not previously
`discussed in any paper of record). Furthermore, because of the strict
`prohibition against the presentation of new evidence or arguments at oral
`hearing, it is recommended that each demonstrative include a citation to the
`record, which allows the Board to easily ascertain whether a given
`demonstrative contains “new” argument or evidence or, instead, contains
`only that which is developed in the existing record.
`Due to the nature of the panel’s consideration of demonstrative
`exhibits, the panel does not anticipate that objections to such exhibits are
`likely to be sustained. Nevertheless, to the extent that a party objects to the
`propriety of any demonstrative exhibit, we expect that the parties will meet
`and confer in good faith to resolve any objections to demonstrative exhibits.
`If such objections cannot be resolved, the parties may file any objections to
`demonstratives with the Board at least one (1) business day before the
`hearing. The objections should identify with particularity which portions of
`the demonstrative exhibits are subject to objection (and should 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.
`We will consider any objections and schedule a conference call if deemed
`necessary. Otherwise, we will reserve ruling on the objections. Any
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`
`4
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`
`Finally, the parties are reminded that each 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 court reporter’s transcript and for the benefit of any judge(s) who may be
`participating electronically.
`
`C. Presenting Counsel
`The Board generally 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.
`
`D. Audio/Visual Equipment Requests
`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 two (2) days before the hearing.
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall commence at
`10 A.M. Eastern Time on February 4, 2020, on the ninth floor of Madison
`Building East, 600 Dulany Street, Alexandria, Virginia, and proceed in the
`manner set forth herein.
`
`
`
`
`5
`
`
`
`PGR2019-00003
`Patent 9,867,839 B2
`
`FOR PETITIONER:
`
`Daniel J. Minion
`Bruce C, Haas
`VENABLE LLP
`dminion@venable.com
`bchaas@venable.com
`
`
`
`
`FOR PATENT OWNER:
`
`Brent A. Johnson
`R. Parrish Freeman
`MASCHOFF BRENNAN, PLLC
`bjohnson@mabr.com
`pfreeman@mabr.com
`
`
`
`6
`
`
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