Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 25
`Filed: March 30, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NAUTILUS HYOSUNG INC.,
`Petitioner,
`
`v.
`
`DIEBOLD NIXDORF, INC.,1
`Patent Owner.
`_______________
`
`Case IPR2016-00529 (Patent 7,229,010)
`Case IPR2016-00530 (Patent 7,229,010)
`Case CBM2016-00034 (Patent 7,314,163)2
`______________
`
`
`Before BARBARA A. BENOIT, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 After institution of inter partes review in these proceedings, Patent Owner
`changed its name. See Paper 14. We use Patent Owner’s updated name in
`this Order.
`2 The Order concerns a matter applicable to all proceedings. We exercise
`our discretion to file a single Order in all proceedings. The parties, however,
`are not authorized to use this caption.
`
`
`571.272.7822
`
`
`Paper No. 25
`Filed: March 30, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NAUTILUS HYOSUNG INC.,
`Petitioner,
`
`v.
`
`DIEBOLD NIXDORF, INC.,1
`Patent Owner.
`_______________
`
`Case IPR2016-00529 (Patent 7,229,010)
`Case IPR2016-00530 (Patent 7,229,010)
`Case CBM2016-00034 (Patent 7,314,163)2
`______________
`
`
`Before BARBARA A. BENOIT, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 After institution of inter partes review in these proceedings, Patent Owner
`changed its name. See Paper 14. We use Patent Owner’s updated name in
`this Order.
`2 The Order concerns a matter applicable to all proceedings. We exercise
`our discretion to file a single Order in all proceedings. The parties, however,
`are not authorized to use this caption.
`
`
`
`IPR2016-00529 (Patent 7,229,010)
`IPR2016-00530 (Patent 7,229,010)
`CBM2016-00034 (Patent 7,314,163)
`
`Decisions to Institute trials have been entered in IPR2016-00529,
`IPR2016-00530, and CBM2016-00034. Paper 7.3 Scheduling Orders in
`each case set the date for oral hearing, if requested by either party, as May 4,
`2017. Paper 8. Pursuant to 37 C.F.R. § 42.70, both parties have requested
`oral hearing. Papers 19, 20. Petitioner’s and Patent Owner’s requests for
`oral hearing are granted.
`Oral argument for these proceedings will be held on May 4, 2017 on
`the ninth floor of Madison Building Eat, 600 Dulany Street, Alexandria,
`Virginia. The hearings will commence at 11:00 AM Eastern Time and will
`be open to the public for in-person attendance. In-person attendance will be
`accommodated on a first-come-first-served basis. If the parties have any
`concern about disclosing confidential information, they are to contact the
`Board at least five (5) business days in advance of the hearings to discuss the
`matter.
`Two separate hearings will be held according to the following
`schedule:
`11:00 AM ET
`
`CBM2016-00034. Each party will have forty-five
`(45) minutes of total time.
`
`12:30 PM ET
`(approx.)
`1:00 PM ET
`(approx.)
`
`Break
`
`IPR2016-00529 and IPR2016-00530 (consolidated).
`Each party will have sixty (60) minutes of total time.
`
`
`3 All citations are to IPR2016-00529. In CBM2016-00034, an Order
`updating the Scheduling Order was issued on March 8, 2017 (Paper 22),
`which changed the hearing date to May 4, 2017.
`2
`
`
`
`
`
`IPR2016-00529 (Patent 7,229,010)
`IPR2016-00530 (Patent 7,229,010)
`CBM2016-00034 (Patent 7,314,163)
`
`Petitioner bears the ultimate burden of proof that the claims at issue
`are unpatentable. Therefore, in each hearing, Petitioner will proceed first to
`present its case with regard to the challenged claims and grounds on which
`we instituted trial. Patent Owner then will argue its oppositions to
`Petitioner’s case. Petitioner may reserve rebuttal time.
`The Board will provide a court reporter for the hearings and the
`reporter’s transcript will constitute the official record of the hearings.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been so
`filed.
`
`Furthermore, pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits
`must be served at least five (5) business days before the hearings. The
`parties shall provide a courtesy copy of any demonstrative exhibits to the
`Board at least three (3) business days prior to the hearings by emailing them
`to Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`the records of these proceedings without prior authorization from the Board.
`The demonstrative exhibits in these proceedings are not evidence and are
`intended only to assist the parties in presenting their oral argument to the
`Board. The parties must, however, file any objections to the demonstratives
`with the Board at least three (3) business days before the hearings. Any
`objection to the demonstrative exhibits that is not presented timely 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
`
`
`
`3
`
`
`
`IPR2016-00529 (Patent 7,229,010)
`IPR2016-00530 (Patent 7,229,010)
`CBM2016-00034 (Patent 7,314,163)
`
`explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until after 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 Board expects lead counsel for each party to be present at oral
`hearings, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party will not be in attendance at
`either oral hearing, the Board should be notified via a joint telephone
`conference call no later than five (5) business days prior to the oral hearing
`to discuss the matter.
`Any special requests for audio visual equipment should be directed to
`Trials@uspto.gov. Requests for special equipment will not be honored
`unless presented in a separate communication not less than three (3) business
`days before the hearings directed to the above email address.
`At least one judge will be participating remotely via a
`videoconferencing device and will not be able to view the projection screen
`in the hearing room. The parties are reminded that the presenter must
`identify clearly and specifically each demonstrative exhibit (e.g., by slide or
`screen number) referenced during the hearings to avoid confusion, and to
`ensure the clarity and accuracy of the reporter’s transcript.
`
`
`
`
`
`4
`
`
`
`IPR2016-00529 (Patent 7,229,010)
`IPR2016-00530 (Patent 7,229,010)
`CBM2016-00034 (Patent 7,314,163)
`
`PETITIONER:
`Timothy W. Riffe
`Nicholas Jepsen
`Linhong Zhang
`Patrick J. Bisenius
`Stuart A. Nelson
`Daniel Tishman
`FISH & RICHARDSON P.C.
`CBM42590-0001CP1@fr.com
`PTABInbound@fr.com
`riffe@fr.com
`njepsen@fr.com
`lwzhang@fr.com
`tishman@fr.com
`
`PATENT OWNER:
`Jason P. Cooper
`Christopher B. Kelly
`Joshua M. Weeks
`ALSTON & BIRD LLP
`Jason.Cooper@alston.com
`Chris.Kelly@alston.com
`Joshua.weeks@alston.com
`
`
`
`5
`
`
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