Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 35
`Date: December 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOSHIBA CORPORATION,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-014411 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)2
`_______________
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings – Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`1 Case IPR2014-01442 has been consolidated with Case IPR2014-01441.
`2 The parties are not authorized to use a multiple case caption. They must
`file individual papers in each case to which they pertain.
`
`
`571-272-7822
`
`
`
`
`
`Paper 35
`Date: December 9, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOSHIBA CORPORATION,
`Petitioner,
`
`v.
`
`OPTICAL DEVICES, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-014411 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)2
`_______________
`
`Before ERICA A. FRANKLIN, GLENN J. PERRY, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings – Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`1 Case IPR2014-01442 has been consolidated with Case IPR2014-01441.
`2 The parties are not authorized to use a multiple case caption. They must
`file individual papers in each case to which they pertain.
`
`
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-01441 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)
`
`
`Petitioner requested oral argument pursuant to 37 C.F.R. § 42.70.
`Paper 323. The request is granted.
`
`Date and Time
`Oral argument for these proceedings will be conducted on January 12
`and 13, 2016. IPR2014-01439, IPR2014-01441, and IPR2014-01443 will be
`heard on January 12, 2016. IPR2014-01445, IPR2014-01446, and IPR2014-
`01447 will be heard on January 13, 2016. On each day of argument (three
`cases), each party will have ninety (90) minutes of total argument time, to be
`allotted among the three cases argued that day, as they wish. However, each
`party should briefly describe their presentation plan before they begin
`argument, including which motions will be argued. It is not required that
`each party address all outstanding motions, but, for clarity of the record,
`each party must identify, for each paper an exhibit discussed, both the paper
`or exhibit by number and the case in which it was filed.
`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 claims for which we instituted trial. Petitioner may
`reserve rebuttal time to respond to Patent Owner’s arguments regarding the
`challenged claims and to Patent Owner’s arguments regarding either or both
`motions, if Patent Owner presents arguments regarding any outstanding
`motion during its allotted time. If Patent Owner does not present arguments
`during its allotted time regarding its outstanding motion(s), Petitioner may
`
`3 For convenience we cite only to paper numbers in Case IPR2014-01439.
`
`
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-01441 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)
`
`not present arguments during its rebuttal time regarding Patent Owner’s
`motions. Thereafter, Patent Owner will respond to Petitioner’s case,
`including any outstanding motion(s) argued by Petitioner. Patent Owner
`may reserve rebuttal time only to respond to Petitioner’s rebuttal arguments
`concerning Patent Owner’s argued motion(s).
`
`Open to Public
`There is a strong public policy interest in making all information
`presented in these proceedings public, as the review determines the
`patentability of claims in an issued patent and, thus, affects the rights of the
`public. This policy is reflected in part, for example, in 35 U.S.C.
`§ 316(a)(1), which provides that the file of any inter partes review be made
`available to the public, except that any petition or document filed with the
`intent that it be sealed shall, if accompanied by a motion to seal, be treated
`as sealed pending the outcome of the ruling on the motion. Accordingly, we
`exercise our discretion to make the oral hearing publically available via in-
`person attendance.
`Oral argument will commence at 10:00 AM Eastern Time, on January
`12 and 13, 2016, on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia, and the oral argument will be open to the public
`for in-person attendance. In person attendance will be accommodated on a
`first come first serve basis.
`
`
`
`
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-01441 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)
`
`Reporter
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`
`Demonstratives
`Demonstratives are aids in support of oral argument and are not
`evidence in the review. They will not become part of the official record of
`this review other than as mentioned in the transcript of oral argument. If
`demonstratives are to be used during oral argument, they must be served
`seven (7) business days before oral argument and otherwise in accordance
`with 37 C.F.R. § 42.70(b). Copies should also be sent by email (not filed via
`PRPS) to the Board. The parties shall not file any demonstrative exhibits
`in any of these cases. Hard copies of the demonstratives should be provided
`to the panel and to the court reporter at argument. The parties are directed to
`St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the
`University of Michigan, Case IPR2013-00041, slip op. at 2–5 (PTAB Jan.
`27, 2014) (Paper 65), and CBS Interactive Inc. v. Helferich Patent Licensing,
`LLC, IPR2013-00033, slip op. at 2–5 (PTAB Oct. 23, 2013) (Paper 118),
`regarding the appropriate content of demonstrative exhibits. 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 ensure the clarity and accuracy of the reporter’s transcript.
`Any issue regarding demonstrative exhibits should be resolved at least
`two (2) business days prior to the hearing by way of a joint telephone
`
`
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-01441 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)
`
`conference call to the Board. The parties are responsible for requesting such
`a conference sufficiently in advance of the hearing to accommodate this
`requirement. Any objection to demonstrative exhibits that is not timely
`presented will be considered waived.
`
`Special Needs and Audio Visual Equipment
`Questions regarding special needs and/or specific audio-visual
`equipment should be directed to the Board at (571) 272-9797. Requests for
`special needs and/or audio-visual equipment must be made five (5) days
`in advance of the earlier hearing date. The request is to be sent directly
`to Trials@uspto.gov. If the request is not received timely, the
`equipment may not be available on the day of the hearing or
`accommodations for the special need may not be possible.
`
`Panel Presence
`Judges Franklin and Perry will be present in hearing room. Judge
`Arpin (Denver) will appear by video link. We ask that Counsel using a
`demonstrative clearly identify it before speaking about it. If a demonstrative
`is not made available to the Board in the manner indicated above, that
`demonstrative may not be available to each of the judges during the hearing
`and may not be considered. Further, images projected, using audio visual
`equipment in Alexandria, will not be visible to Judge Arpin in Denver.
`Because of limitations on the audio transmission systems in our hearing
`rooms, the presenter may speak only when standing at the hearing room
`podium.
`
`
`
`Case IPR2014-01439 (Patent RE42,913 E)
`Case IPR2014-01441 (Patent RE43,681 E)
`Case IPR2014-01443 (Patent RE40,927 E)
`Case IPR2014-01445 (Patent 7,839,729 B2)
`Case IPR2014-01446 (Patent 7,196,979 B2)
`Case IPR2014-01447 (Patent 8,416,651 B2)
`
`Counsel Presence
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, lead or backup counsel may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the oral hearing, the parties should initiate a joint telephone
`conference with the Board no later than two (2) business days prior to the
`oral hearing to discuss the matter.
`
`For PETITIONER:
`
`Alan A. Limbach
`alan.limbach@dlapiper.com
`
`Brent K. Yamashita
`brent.yamashita@dlapiper.com
`
`For PATENT OWNER:
`
`Theodosios Thomas
`tedt@optical-devices.com
`
`Stephen Tytran
`sjt@optical-devices.com
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