Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 30
`Date: April 4, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Cases1
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings and Trial Hearing
`37 C.F.R. §§ 42.5, 42.70
`
`
`
`
`
`
`1 This order addresses issues raised in both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 30
`Date: April 4, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`J SQUARED, INC. d/b/a UNIVERSITY LOFT COMPANY,
`Petitioner,
`
`v.
`
`SAUDER MANUFACTURING COMPANY,
`Patent Owner.
`____________
`
`Cases1
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`____________
`
`Before LINDA E. HORNER, JOSIAH C. COCKS, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings and Trial Hearing
`37 C.F.R. §§ 42.5, 42.70
`
`
`
`
`
`
`1 This order addresses issues raised in both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however,
`are not authorized to use this style heading in subsequent papers.
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`INTRODUCTION
`
`I.
`
`
`
`A conference call was held on the afternoon of April 1, 2016, at
`
`3:00 p.m. The participants of the call were respective counsel for the parties
`
`and Judges Horner, Cocks, and Worth. Counsel for Patent Owner, Sauder
`
`Manufacturing Company (“Patent Owner”) initiated the call to seek
`
`authorization to file a motion for observations on cross examination
`
`testimony of its own witnesses and to bring physical specimens of Patent
`
`Owner’s commercial product and of Petitioner’s commercial product to the
`
`oral argument. Details of the oral argument were also discussed on the call.
`
`The Petitioner provided a court report for the conference call, and
`
`agreed to provide a copy of the transcript of the call to the Board.
`
`The Board heard arguments presented by Patent Owner and Petitioner
`
`concerning Patent Owner’s requests. The main points are summarized
`
`below in sections II and III. A copy of the transcript of the conference call
`
`will be entered into the record when it has been received by the Board.
`
`The Board also provides, in this Order, details on, and guidance for,
`
`the oral argument in section IV.
`
`II. REQUEST TO FILE MOTION FOR OBSERVATIONS
`
`Patent Owner requested authorization to file motions for observations
`
`on its own witnesses because the cross-examination of Patent Owner’s
`
`witnesses took place after Patent Owner filed its last substantive paper, such
`
`that Patent Owner had no way to bring relevant testimony of its own
`
`witnesses to the Board’s attention. In the alternative, Patent Owner
`
`requested authorization to file a non-argumentative listing of the portions of
`
`the deposition testimony that provide context for the characterizations of the
`
`testimony made by Petitioner in its Reply. The Board denied both requests.
`
`2
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`As noted in our recent Order expunging Patent Owner’s unauthorized
`
`
`
`motions for observations (Paper 29), “it is the party taking the cross-
`
`examination that typically files observations.” Paper 29, at 3. In this
`
`instance, the deposition transcripts of Patent Owner’s witnesses are not
`
`lengthy. The Board can review the direct testimony of Patent Owner’s
`
`witnesses memorialized in the witnesses’ declarations and the cross-
`
`examination and any redirect examination and re-cross examination of the
`
`witnesses memorialized in the deposition transcripts in order to assess the
`
`characterizations of the deposition testimony made by Petitioner in its Reply.
`
`III. PHYSICAL EXHIBITS
`
`Patent Owner requested to bring physical specimens of Patent
`
`Owner’s commercial product and of Petitioner’s commercial product to the
`
`oral argument for inspection by the Board. Petitioner objected because these
`
`physical specimens were not made part of the Record and constitute
`
`unauthorized and belated supplemental information. The Board denied
`
`Patent Owner’s request.
`
`A trial before the Board is conducted on paper. By the time the
`
`proceeding reaches final oral argument, nothing new can be presented, no
`
`new evidence, no new arguments. Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48768 (Aug. 14, 2012). At that stage, the trial is already completed,
`
`and the final oral argument is not an opportunity to add anything to a party’s
`
`case. Whatever a party desires to present, for whatever reason, should have
`
`already been presented in the party’s petition, response, opposition, motion,
`
`reply, declarations, observations on cross-examination, or other exhibits
`
`presented at an appropriate time during the trial. It is from that perspective
`
`that we read the prohibition in the Board’s Patent Trial Practice Guide
`
`3
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`against presenting new evidence or new arguments in the demonstrative
`
`
`
`exhibits at final oral argument.
`
`Patent Owner has submitted with its Patent Owner Response videos of
`
`its commercial product demonstrating how a user can remove and reattach
`
`the seat from the base portion of the chair and photos of Petitioner’s
`
`commercial product. The Board sees no need to supplement these videos
`
`and photos with physical specimens of the chairs at the oral argument.
`
`Further, in light of the fact that Patent Owner has not requested
`
`introduction of the physical commercial chairs into the record, such
`
`introduction at this stage of the proceeding would need to be approved
`
`through a motion for supplemental information. Patent Owner has not filed
`
`such a motion. We do not, by this order, provide authorization for Patent
`
`Owner to file a motion to submit this supplemental information, because
`
`Patent Owner was clearly in possession of these physical samples at the time
`
`it filed its Patent Owner Response, and thus, Patent Owner likely cannot
`
`now show why the supplemental information reasonably could not have
`
`been obtained earlier, as required by 37 C.F.R. § 42.123(b). As such, the
`
`Board exercised discretion to not allow presentation of any physical
`
`specimens of commercial chairs at the oral argument.
`
`IV. ORAL ARGUMENT
`
`As set forth in the Scheduling Order in both proceedings (Paper 8), an
`
`oral argument, if requested, was set for April 21, 2016. Both Petitioner and
`
`Patent Owner have requested oral argument in these proceedings pursuant to
`
`37 C.F.R. § 42.70. See Papers 23, 24. We grant these requests.
`
`Oral argument in these proceedings will commence at 2:00 PM on
`
`April 21, 2016 on the ninth floor of Madison Building East, 600 Dulany
`
`4
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`Street, Alexandria, Virginia. The Board will provide a court reporter for the
`
`
`
`oral argument, and the reporter’s transcript will constitute the official record
`
`of the hearing.
`
`Because the proceedings involve the same patent and overlapping
`
`issues of claim interpretation, we will hear the proceedings together. Each
`
`party will have 60 minutes of total argument time for both proceedings.
`
`Petitioner bears the ultimate burden of proof that the claims at issue in these
`
`reviews are unpatentable. Therefore, Petitioner will proceed first to present
`
`its case with regard to the challenged claims on which basis we instituted
`
`trial. Thereafter, Patent Owner will respond to Petitioner’s case. After that,
`
`Petitioner will make use of the rest of its time responding to Patent Owner.
`
`There are no motions to be addressed at the oral argument, and no rebuttal
`
`time will be allotted to Patent Owner.
`
`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)
`
`and 35 U.S. C. § 326(a)(1), which provide that the file of any inter partes
`
`review or post grant 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. The oral argument will be open to the public for
`
`in-person attendance. In-person attendance will be accommodated on a
`
`first-come, first-served basis.
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served
`
`five business days before the oral argument. The parties are directed to CBS
`
`5
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB
`
`
`
`October 23, 2013) (Paper 118) and St. Jude Medical, Cardiology Div., Inc. v.
`
`Board of Regents of the University of Michigan, IPR 2013-00041 (PTAB
`
`January 27, 2014) (Paper 65), regarding the appropriate content of
`
`demonstrative exhibits.
`
`The parties are further directed to request a conference call with the
`
`Board no later than three business days prior to the oral argument to resolve
`
`any dispute over the propriety of each party’s demonstrative exhibits. The
`
`parties are responsible for requesting such a conference sufficiently in
`
`advance of the oral argument to accommodate this requirement. Any
`
`objection to demonstrative exhibits that is not presented timely will be
`
`considered waived. Demonstratives should be filed at the Board no later
`
`than two days before the oral argument. A hard copy of the demonstratives
`
`should be provided to the court reporter at the oral argument.
`
`Questions regarding specific audio-visual equipment should be
`
`directed to the Board at (571) 272-9797. Requests for audio-visual
`
`equipment are to be made 5 days in advance of the oral argument 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 oral argument. 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 oral argument to ensure the clarity and
`
`accuracy of the reporter’s transcript.
`
`The Board expects lead counsel for each party to be present in person
`
`at the oral argument. However, lead or backup counsel of the presenting
`
`party may put forward the party’s argument. If either party anticipates that
`
`6
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`its lead counsel will not be attending the oral argument, the parties should
`
`
`
`initiate a joint telephone conference with the Board no later than two
`
`business days prior to the oral argument to discuss the matter.
`
`It is therefore
`
`V. ORDER
`
`ORDERED that Patent Owner may not file Motions for Observations
`
`on Cross Examination of its own witnesses in IPR2015-00774 and IPR2015-
`
`00958;
`
`ORDERED that the Patent Owner may not, at final oral argument, use
`
`physical specimens of the commercial chairs of Patent Owner and Petitioner;
`
`ORDERED that oral argument will commence at 2 PM on April 21,
`
`and
`
`2016.
`
`
`
`7
`
`
`
`
`IPR2015-00774 (Patent 8,585,136 B2)
`IPR2015-00958 (Patent 8,585,136 B2)
`
`
`
`
`
`
`
`PETITIONER:
`
`William F. Bahret
`Bahret & Associates LLC
`bahret@bahretlaw.com
`
`
`
`Stephen F. Rost
`Taft Stettinius & Hollister LLP
`SRost@taftlaw.com
`
`
`
`PATENT OWNER:
`
`Thomas N. Young
`Young Basile Hanlon & MacFarlane P.C.
`litigation@youngbasile.com
`
`Timothy Eagle
`Varnum Riddering Schmidt & Howlett LLP
`teeagle@varnumlaw.com
`
`Mark C. St. Amour
`Young Basile Hanlon & MacFarlane P.C.
`st.amour@youngbasile.com
`
`8
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