throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Paper 36
`Date: April 18, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF
`BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE
`BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS,
`FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK
`OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL
`RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF
`RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO, and
`FEDERAL RESERVE BANK OF ST. LOUIS,
`Petitioner,
`
`v.
`
`BOZEMAN FINANCIAL LLC,
`Patent Owner.
`_______________
`
`Case CBM2017-00035 (Patent 6,754,640 B2)
`Case CBM2017-00036 (Patent 8,768,840 B2)1
`_______________
`
`Before MICHAEL W. KIM, WILLIAM V. SAINDON, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`1 This Decision addresses the same issue in the above-identified post-grant
`reviews. Therefore, we issue one Decision to be filed in all cases.
`
`
`
`

`

`CBM2017-00035 (Patent 6,754,640 B2)
`CBM2017-00036 (Patent 8,768,840 B2)
`
`
`On April 4, 2018, Judges Kim, Saindon, and Cherry held a conference call
`with counsel for the parties regarding Petitioner’s objections to certain slides of
`Patent Owner’s demonstratives for the oral hearing (Exhibit 2009, filed Apr. 3,
`2018) and Petitioner’s concerns regarding the use of confidential materials at the
`oral hearing.
`With respect to objections to Patent Owner’s demonstratives, Petitioner
`objected to slides 2–4, 6–15, 22–23, and 32–35. Petitioner objected to slides 2–4
`and 6–15 as including figures from the challenged patents that were never
`previously cited in Patent Owner’s briefs. Slide 22 was objected to for including
`material not included in Patent Owner’s briefs—namely, a comparison of a figure
`of U.S. Patent No. 8,311,945 B2 and a figure from the challenged patents. Slide 23
`was objected to as including mischaracterizations of the record. Finally, slides 32–
`35 were objected to as including arguments regarding the Section 101 ground in
`CBM2017-00035 that were never previously raised.
`On the call, we sustained-in-part and overruled-in-part Petitioner’s
`objections. We overruled Petitioner’s objections with respect to slides 2–4 and 6–
`15, because even though those figures of the challenged patents were not
`previously cited, Patent Owner remains free to use them as background in
`explaining its invention. We strongly cautioned Patent Owner to use them as
`background only and not to advance new arguments not contained in its written
`briefs. With respect to slide 22, we noted that Patent Owner had presented
`arguments regarding the similarities between its claims and the claims of U.S.
`Patent No. 8,311,945 B2. We declined to preemptively limit the way Patent
`Owner could present these arguments at the oral hearing. Again, however, we
`cautioned Patent Owner not to present new arguments using slide 22, and to limit
`the slide’s use to presenting its existing arguments. As for slide 23, we declined to
`
`2
`
`

`

`CBM2017-00035 (Patent 6,754,640 B2)
`CBM2017-00036 (Patent 8,768,840 B2)
`
`exclude the slide solely for alleged inaccuracies. We noted that Petitioner would
`have an opportunity at the oral hearing to point out, on the record, the alleged
`inaccuracies in Patent Owner’s presentation. Finally, we sustained Petitioner’s
`objections against slides 32–35. We noted that the Patent Owner Response in
`CBM2017-00035 contained no arguments on the Section 101 ground and merely
`attempted to incorporate by reference from the briefs filed in CBM2017-00036
`(involving a different patent). We informed Patent Owner that this incorporation
`by reference was improper, and that we would not consider arguments
`incorporated by reference. Furthermore, we noted that even if the incorporated by
`reference arguments were considered, they did not include the limitation-by-
`limitation analysis of the claims of the patent challenged in CBM2017-00035, as
`was shown in slides 32–35. Thus, we sustained Petitioner’s objection to slides 32–
`35.
`
`As for the issues regarding confidentiality, Patent Owner agreed to waive,
`for purposes of the hearing, any confidentiality in the materials presented in
`Petitioner’s slides. Patent Owner agreed that Petitioner would be able to file its
`unredacted slides in the public record and use them in the hearing without sealing
`the hearing room.
`
`ORDERED that, for the reasons set forth above, Petitioner’s objections to
`slides 2–4, 6–15, 22–23, and 32–35 are overruled-in-part and sustained in part; and
`
`FURTHER ORDERED that slides 32–35 of Exhibit 2009 (filed on April 3,
`2018) are excluded.
`
`
`
`
`
`3
`
`

`

`CBM2017-00035 (Patent 6,754,640 B2)
`CBM2017-00036 (Patent 8,768,840 B2)
`
`
`
`
`For Petitioner:
`
`Natasha H. Moffitt
`Holmes J. Hawkins III
`Abby L. Parsons
`KING & SPALDING LLP
`nmoffitt@kslaw.com
`hhawkins@kslaw.com
`aparsons@kslaw.com
`
`
`For Patent Owner:
`
`John W. Goldschmidt, Jr.
`FERENCE AND ASSOCIATES
`jgoldschmidt@ferencelaw.com
`
`Thomas J. Maiorino
`MAIORINO LAW GROUP LLC
`tmaiorinolaw@comcast.net
`
`
`
`4
`
`

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