`571-272-7822
`
`Paper 24
`Entered: October 28, 2014
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOSHIBA CORPORATION, TOSHIBA AMERICA, INC.,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.,
`and TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00113
`Patent 6,058,045
`_______________
`
`
`
`Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
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`IPR2014-00113
`Patent 6,058,045
`
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`
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`The Revised Scheduling Order (Paper 14) for this proceeding provided that
`an oral hearing would be conducted if the hearing is requested by the parties and
`granted by the Board. Patent Owner and Petitioner requested oral hearing pursuant
`to 37 C.F.R. § 42.70. Papers 22, 23. The requests are granted.
`Each side will have sixty (60) minutes to present argument. Petitioner bears
`the ultimate burden of proof that Patent Owner’s claims at issue are unpatentable.
`Thus, 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. Thereafter, Patent Owner will respond to Petitioner’s
`presentation.
`The hearing will commence at 10:00 AM on November 6, 2014, on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia. The
`Board will provide a court reporter for the hearing and the reporter’s transcript will
`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 contact the Board at least 5 days in advance of the hearing to
`discuss the matter. At least one member of the panel will be attending the oral
`argument remotely by use of two-way audiovisual communication equipment.
`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, under 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served at least five business days before the hearing date. The parties also shall
`provide a courtesy copy of any demonstrative exhibits to the Board at least five
`business days prior to the hearing by emailing them to Trials@uspto.gov. The
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`IPR2014-00113
`Patent 6,058,045
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`parties shall not file any demonstrative exhibits in this proceeding without prior
`authorization from the Board. The parties also should note that one or more
`members of the panel will be attending 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 filed before the hearing or otherwise made available to
`the judge presiding over the hearing remotely, that demonstrative exhibit will not
`be considered.
`The parties must file any objections to the demonstratives with the Board at
`least two 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 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. See also CBS Interactive Inc. v. Helferich Patent
`Licensing, LLC, IPR2013-00033, Paper 118 (PTAB October 23, 2013) (The Board
`has the discretion to limit the parties’ demonstratives to pages in the record should
`there be no easy resolution to objections over demonstratives). 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 be attending the oral argument,
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`IPR2014-00113
`Patent 6,058,045
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`the parties should initiate a joint telephone conference with the Board no later than
`two business days prior to the oral hearing to discuss the matter.
`Any special requests for audiovisual 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 five days before the hearing,
`directed to the above email address.
`
`
`
`
`
`PETITIONER:
`Alan A. Limbach
`Gerald T. Sekimura
`DLA PIPER LLP (US)
`alan.limbach@dlapiper.com
`gerald.sekimura@dlapiper.com
`
`
`
`PATENT OWNER:
`Robert Greene Sterne
`Jon E. Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`
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