Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`Paper 22
`Entered: May 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
`Case IPR2014-00749 (Patent 8,577,003 B2)
`____________
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`Paper 22
`Entered: May 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
`Case IPR2014-00749 (Patent 8,577,003 B2)
`____________
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
`Case IPR2014-00749 (Patent 8,577,003 B2)
`
`On September 17, 2014, we entered a Decision to Institute a trial in
`
`each of IPR2014-00493 (Paper 8) and IPR2014-00749 (Paper 6). A
`
`Scheduling Order issued in each case set the date for oral hearing, if
`
`requested by either party, as June 4, 2015. Pursuant to 37 C.F.R. § 42.70,
`
`both Petitioner and Patent Owner have requested an oral hearing in each
`
`proceeding. These requests are granted.
`
`Oral argument for IPR2014-00493 and IPR2014-00749 will be held
`
`on June 4, 2015 on the ninth floor of Madison Building Eat, 600 Dulany
`
`Street, Alexandria, Virginia.
`
`Commencing at 1:00 PM ET, oral argument for the issues in
`
`IPR2014-00493 will be held. Each party will have 45 minutes of argument
`
`time. Petitioner bears the ultimate burden of proof that the claims at issue
`
`are unpatentable. Therefore, Petitioner will proceed first to present its case
`
`with regard to the challenged claims and grounds on which we instituted
`
`trial in this proceeding. Patent Owner then will argue its opposition to
`
`Petitioner’s case. Finally, Petitioner may use any time it reserved to rebut
`
`Patent Owner’s opposition.
`
`Following the completion of oral argument for the issues in IPR2014-
`
`00493, argument for the issues in IPR2014-00749 will be held. Each party
`
`will have 45 minutes of argument time. Petitioner bears the ultimate burden
`
`of proof that the claims at issue are unpatentable. Therefore, Petitioner will
`
`proceed first to present its case with regard to the challenged claims and
`
`grounds on which we instituted trial in this proceeding. Patent Owner then
`
`will argue its opposition to Petitioner’s case. Finally, Petitioner may use any
`
`time it reserved to rebut Patent Owner’s opposition.
`
`2
`
`
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
`Case IPR2014-00749 (Patent 8,577,003 B2)
`
`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 to contact the
`
`Board at least 10 days in advance of the hearing to discuss the matter.
`
`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. The parties 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 parties shall not file any demonstrative exhibits in
`
`these proceedings without prior authorization from the Board.
`
`The parties must file any objections to the demonstratives with the
`
`Board at least three business days before the hearing. 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
`
`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
`
`3
`
`
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
`Case IPR2014-00749 (Patent 8,577,003 B2)
`
`Regents of the University of Michigan, IPR2013-00041 (PTAB January 27,
`
`2014) (Paper 65), for guidance regarding the appropriate content of
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`demonstrative exhibits.
`
`
`
`The Board expects lead counsel for each party to be present at oral
`
`hearing, 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
`
`oral hearing, the Board should be notified via a joint telephone conference
`
`call no later than two 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 five days before
`
`the hearing directed to the above email address.
`
`At least one judge will be participating remotely via a
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`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 hearing to avoid confusion, and to
`
`ensure the clarity and accuracy of the reporter’s transcript.
`
`
`
`
`
`4
`
`
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
`Case IPR2014-00749 (Patent 8,577,003 B2)
`
`PETITIONER:
`
`Lori A. Gordon
`Michael B. Ray
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-PTAB@skgf.com
`mray-PTAB@skgf.com
`
`
`PATENT OWNER:
`
`Rajiv P. Patel
`Darren E. Donnelly
`FENWICK & WEST LLP
`rpatel-ptab@fenwick.com
`ddonnelly-ptab@fenwick.com
`
`
`
`
`
`5
`
`
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