`571-272-7822
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`Paper 17
`Entered: May 22, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`OSRAM SYLVANIA INC.,
`Petitioner,
`
`v.
`
`JAM STRAIT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00703
`Patent 6,786,625 B2
`____________
`
`
`Before MIRIAM L. QUINN, BART A. GERSTENBLITH, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`IPR2014-00703
`Patent 6,786,625 B2
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`Petitioner has requested an oral hearing in this proceeding pursuant to
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`37 C.F.R. § 42.70. See Paper 16. Patent Owner has not requested an oral
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`hearing. The deadline for requesting a hearing has passed. We grant
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`Petitioner’s request.
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`This proceeding will be heard on June 18, 2015. Each party will have
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`45 minutes of total argument time. Petitioner bears the ultimate burden of
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`proof that the patent claims at issue in this review are unpatentable.
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`Therefore, Petitioner will proceed first to present its case with regard to the
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`challenged claims on which basis we instituted trial. Thereafter, Patent
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`Owner will respond to Petitioner’s case. After that, to the extent Petitioner
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`reserves rebuttal time, Petitioner may make use of its rebuttal time
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`responding to Patent Owner. There are no motions to amend or other
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`motions to be addressed at the hearing.
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`There is a strong public policy interest in making all information
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`presented in this proceeding public, as the review determines the
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`patentability of claims in an issued patent and, thus, affects the rights of the
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`public. This policy is reflected in part, for example, in 35 U.S.C.
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`§ 316(a)(1), which provides that the file of any inter partes review be made
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`available to the public, except that any petition or document filed with the
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`intent that it be sealed shall, if accompanied by a motion to seal, be treated
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`as sealed pending the outcome of the ruling on the motion. Accordingly, we
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`exercise our discretion to make the oral hearing publically available via
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`in-person attendance.
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`Specifically, the hearing will commence at 2:00 PM Eastern Time, on
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`the aforementioned date, on the ninth floor of Madison Building East, 600
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`Dulany Street, Alexandria, Virginia, and it will be open to the public for
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`2
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`IPR2014-00703
`Patent 6,786,625 B2
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`in-person attendance. In-person attendance will be accommodated on a
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`first-come, first-serve basis.
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`The Board will provide a court reporter for the hearing, and the
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`reporter’s transcript will constitute the official record of the hearing. Under
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`37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be served five
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`business days before the hearing. The parties are directed to CBS Interactive
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`Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118
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`(Oct. 23, 2013), regarding the appropriate content of demonstrative exhibits.
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`Any issue regarding demonstrative exhibits should be resolved at least
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`two business days prior to the hearing by way of a joint telephone
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`conference call to the Board. The parties are responsible for requesting such
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`a conference sufficiently in advance of the hearing to accommodate this
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`requirement. Any objection to demonstrative exhibits that is not timely
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`presented will be considered waived. Demonstratives should be filed at
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`the Board no later than two days before the hearing. A hard copy of the
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`demonstratives should be provided to the court reporter at the hearing.
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`Questions regarding specific audio-visual equipment should be
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`directed to the Board at 571-272-9797. Requests for audio-visual
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`equipment are to be made 5 days in advance of the hearing date. The
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`request is to be sent directly to Trials@uspto.gov. If the request is not
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`received timely, the equipment may not be available on the day of the
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`hearing. The parties are reminded that the presenter must identify clearly
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`and specifically each demonstrative exhibit (e.g., by slide or screen number)
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`referenced during the hearing to ensure the clarity and accuracy of the
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`reporter’s transcript.
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`IPR2014-00703
`Patent 6,786,625 B2
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`The parties also should note that at least one member of the panel will
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`be attending the hearing electronically from a remote location, and that if a
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`demonstrative is not filed or otherwise made fully available or visible to the
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`judge presiding over the hearing remotely, that demonstrative will not be
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`considered. If the parties have questions as to whether demonstrative
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`exhibits would be sufficiently visible and available to all of the judges, the
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`parties are invited to contact the Board at 571-272-9797. Documents
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`presented on the Elmo projector are not visible to remote judges, so please
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`plan accordingly.
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`The Board expects lead counsel for each party to be present in person
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`at the oral hearing. However, lead or backup counsel may present the
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`party’s argument. If either party anticipates that its lead counsel will not be
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`attending the oral hearing, the parties should initiate a joint telephone
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`conference with the Board no later than two business days prior to the oral
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`hearing to discuss the matter.
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`IPR2014-00703
`Patent 6,786,625 B2
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`PETITIONER:
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`Paul H. Berghoff (Lead Counsel)
`McDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`300 South Wacker Drive
`Chicago, IL 60606
`berghoff@mbhb.com
`
`Eric R. Moran (Back-up Counsel)
`moran@mbhb.com
`
`John M. Schafer (Back-up Counsel)
`Schafer@mbhb.com
`
`
`PATENT OWNER:
`
`Seth Nehrbass (Lead Counsel)
`GARVEY, SMITH, NEHRBASS & NORTH, L.L.C.
`3838 N. Causeway Blvd., Suite 3290
`Metairie, LA 70002
`SethNehrbass@gsnn.us
`
`Mackenzie Rodriguez (Back-up Counsel)
`mrodriguez@gsnn.us
`
`Kenneth Tolar
`tolar@cavtel.net
`
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