Paper 42
`Trials@uspto.gov
`571-272-7822 Entered: January 21, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORELOGIC, INC.,
`Petitioner,
`
`v.
`
`BOUNDARY SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`IPR2015-00219 (Patent 8,065,352 B2)
`IPR2015-00222 (Patent 8,065,352 B2)
`IPR2015-00226 (Patent 7,499,946 B2)
` IPR2015-00228 (Patent 7,092,957 B2)1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, PETER P. CHEN, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 We use this caption to indicate that this Order applies to, and is entered in,
`each of four proceedings. The parties are not authorized to use this caption.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 21, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CORELOGIC, INC.,
`Petitioner,
`
`v.
`
`BOUNDARY SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`IPR2015-00219 (Patent 8,065,352 B2)
`IPR2015-00222 (Patent 8,065,352 B2)
`IPR2015-00226 (Patent 7,499,946 B2)
` IPR2015-00228 (Patent 7,092,957 B2)1
`____________
`
`
`
`Before LYNNE E. PETTIGREW, PETER P. CHEN, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 We use this caption to indicate that this Order applies to, and is entered in,
`each of four proceedings. The parties are not authorized to use this caption.
`
`
`
`IPR2015-00219 (Patent 8,065,352 B2)
`IPR2015-00222 (Patent 8,065,352 B2)
`IPR2015-00226 (Patent 7,499,946 B2)
`IPR2015-00228 (Patent 7,092,957 B2)
`
`Petitioner, CoreLogic, Inc., requests an oral hearing in each of these
`
`proceedings pursuant to 37 C.F.R. § 42.70. Paper 39 (IPR2015-00219);
`
`Paper 39 (IPR2015-00222); Paper 41 (IPR2015-00226); Paper 41 (IPR2015-
`
`00228). Patent Owner, Boundary Solutions, Inc., requests a consolidated
`
`hearing for the four proceedings. Paper 38 (IPR2015-00219); Paper 38
`
`(IPR2015-00222); Paper 40 (IPR2015-00226); Paper 40 (IPR2015-00228).
`
`We grant the requests, including Patent Owner’s request for a consolidated
`
`hearing for the four cases, which involve related patents and overlapping
`
`prior art. The consolidated hearing will commence at 2:00 PM Eastern
`
`Time on Thursday, February 11, 2016, on the ninth floor of Madison
`
`Building East, 600 Dulany Street, Alexandria, VA.
`
`Each party will have 75 minutes of argument time. Petitioner bears
`
`the ultimate burden of persuasion that the claims at issue are unpatentable.
`
`Therefore, Petitioner will open the hearing by presenting its case regarding
`
`the challenged claims for which the Board instituted trial. Petitioner also
`
`may present argument regarding its Motions to Exclude filed in each
`
`proceeding. Patent Owner then will have the opportunity to respond to
`
`Petitioner’s arguments. Finally, Petitioner may use any time it has reserved
`
`for rebuttal to respond to arguments presented by Patent Owner. Patent
`
`Owner may not reserve rebuttal time.
`
`The Board will provide a court reporter, and the transcript shall
`
`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.
`
`2
`
`
`
`IPR2015-00219 (Patent 8,065,352 B2)
`IPR2015-00222 (Patent 8,065,352 B2)
`IPR2015-00226 (Patent 7,499,946 B2)
`IPR2015-00228 (Patent 7,092,957 B2)
`
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must
`
`be served on opposing counsel at least five business days before the hearing
`
`and filed with the Board no later than two business days before the hearing.
`
`The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The
`
`Board of Regents of the University of Michigan, IPR2013-00041, Paper 65
`
`(PTAB Jan. 27, 2014), regarding the appropriate content of demonstrative
`
`exhibits. A hard copy of the demonstratives should be provided to the court
`
`reporter at the hearing.
`
`The Board expects that the parties will meet and confer in good faith
`
`to resolve any objections to demonstrative exhibits, but if such objections
`
`cannot be resolved, the parties must file any objections to the demonstratives
`
`with the Board at least three business days before the hearing. The
`
`objections should identify with particularity which portions of the
`
`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. Any objection to the demonstrative
`
`exhibits that is not timely presented will be considered waived.
`
`At least one member of the panel will be attending the hearing
`
`remotely, by video and audio link. The parties are reminded that, during the
`
`hearing, the presenter must identify clearly each demonstrative exhibit (e.g.,
`
`by referencing a specific slide or screen number) to ensure clarity and
`
`accuracy of the reporter’s transcript and to ensure that a remote judge can
`
`follow the argument, even if the video connection is disrupted.
`
`3
`
`
`
`IPR2015-00219 (Patent 8,065,352 B2)
`IPR2015-00222 (Patent 8,065,352 B2)
`IPR2015-00226 (Patent 7,499,946 B2)
`IPR2015-00228 (Patent 7,092,957 B2)
`
`Questions regarding specific audio-visual equipment should be
`
`directed to the Board at (571) 272-9797. Requests for audio-visual
`
`equipment must be made five days in advance of the hearing date. The
`
`request is to be sent to Trials@uspto.gov. If the request is not timely
`
`received, the equipment may not be available on the day of the hearing.
`
`No live testimony from any witness will be taken at the oral hearing.
`
`The Board expects lead counsel for each party to be present at the oral
`
`hearing, although any counsel of record may make the actual presentation.
`
`If either party anticipates that its lead counsel will not be in attendance at the
`
`oral hearing, the parties should initiate a joint telephone conference with the
`
`Board no later than five business days prior to the oral hearing to discuss the
`
`matter.
`
`
`
`4
`
`
`
`IPR2015-00219 (Patent 8,065,352 B2)
`IPR2015-00222 (Patent 8,065,352 B2)
`IPR2015-00226 (Patent 7,499,946 B2)
`IPR2015-00228 (Patent 7,092,957 B2)
`
`FOR PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`Paul Hastings LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`FOR PATENT OWNER:
`
`Lawrence Edelman
`The Law Office of Lawrence Edelman
`lawrence.edelman@comcast.net
`
`
`
`Bruce J. Wecker
`Hausfeld LLP
`bwecker@hausfeld.com
`
`
`5
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