Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 22
`Filed: December 1, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY; OLD REPUBLIC TITLE
`INSURANCE GROUP, INC.; and OLD REPUBLIC NATIONAL TITLE
`INSURANCE COMPANY,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2016-00019; IPR2016-000201
`Patent 6,510,434 B1
`____________
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
` ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses similar issues in all the referenced cases, therefore,
`we issue a single Order to be filed in each case. The parties are not
`authorized to use this style of caption in any other filings.
`
`
`571-272-7822
`
`
`
`
`Paper 22
`Filed: December 1, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY; OLD REPUBLIC TITLE
`INSURANCE GROUP, INC.; and OLD REPUBLIC NATIONAL TITLE
`INSURANCE COMPANY,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`IPR2016-00019; IPR2016-000201
`Patent 6,510,434 B1
`____________
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, JENNIFER S. BISK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
` ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses similar issues in all the referenced cases, therefore,
`we issue a single Order to be filed in each case. The parties are not
`authorized to use this style of caption in any other filings.
`
`
`
`IPR2016-00019
`IPR2016-00020
`Patent 6,510,434 B1
`
`
`DISCUSSION
`An inter partes review was instituted in each of these proceedings.
`
`Paper 8.2 Petitioners and Patent Owner request an oral hearing in each of
`the proceedings pursuant to 37 C.F.R. § 42.70(a). Papers 18, 19. Given the
`overlap of issues between the cases, Petitioners request that arguments for
`Case IPR2016-00019 and Case 2016-00020 be heard together, with each
`party having sixty (60) minutes to argue the cases. Paper 18, 2. Patent
`Owner agrees that arguments for the two cases should be heard together, and
`also agrees that each party should have sixty (60) minutes for argument.
`Paper 19, 2. Patent Owner requests that it be permitted to reserve some of
`its time for rebuttal to address Petitioners’ arguments regarding its Motions
`to Exclude. Id.
`
`We have considered the requests, and the hearing will commence at
`1:00 PM Eastern Time, on Tuesday, January 10, 2017. The oral hearing will
`be open to the public for in-person attendance, on the ninth floor of Madison
`Building East, 600 Dulany Street, Alexandria, Virginia. Space in the
`hearing room is limited, and any attendees beyond three per party (including
`any attorneys who may be appearing) will be accommodated on a first-
`come, first-served basis.
`
`Petitioner will first present its arguments for both cases. Thereafter,
`Patent Owner will argue its opposition to Petitioners’ cases. Patent Owner
`may also discuss the Motions to Exclude during its allotted time. Petitioners
`then may use any time reserved to rebut Patent Owner’s opposition, and to
`
`
`2 Citations are to Case IPR2016-00019 as representative, unless otherwise
`noted or ordered.
`
`2
`
`
`
`IPR2016-00019
`IPR2016-00020
`Patent 6,510,434 B1
`
`oppose Patent Owner’s Motions to Exclude, if presented. Patent Owner may
`use any time it reserved solely to rebut Petitioners’ opposition to Patent
`Owner’s Motions to Exclude. Each party is permitted 60 minutes for
`argument.
`
`At least seven (7) business days prior to the oral arguments, each
`party shall serve on the other party any demonstrative exhibit(s) it intends to
`use during the oral arguments. See 37 C.F.R. § 42.70(b). The parties also
`shall provide the demonstrative exhibits to the Board at least five (5)
`business days prior to the oral arguments by e-mailing them
`to Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`these cases without our prior authorization.3 Demonstrative exhibits are not
`evidence, but merely a visual aid at the oral arguments. Demonstrative
`exhibits may not introduce new evidence or raise new arguments, but instead
`should cite to evidence in the record. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65) and
`CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033,
`(PTAB Oct. 23, 2013) (Paper 118), for guidance regarding the appropriate
`content of demonstrative exhibits.
`
`The parties should attempt to resolve any objections to demonstratives
`prior to involving the Board. Any issue regarding demonstrative exhibits
`that cannot be resolved should be identified in joint email communications at
`
`
`3 In accordance with our discretion under 37 C.F.R. § 42.5(b), we modify 37
`C.F.R. § 42.70(b) to require that the parties first seek our authorization to
`file any demonstratives exhibits in these cases.
`
`3
`
`
`
`IPR2016-00019
`IPR2016-00020
`Patent 6,510,434 B1
`
`least three (3) business days prior to the hearing. To aid in the preparation
`of an accurate transcript, each party shall provide paper copies of its
`demonstratives to the court reporter on the day of the oral arguments. Such
`paper copies shall not become part of the record of this proceeding. The
`parties are reminded that each presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number),
`paper, or exhibit referenced during the oral arguments to ensure the clarity
`and accuracy of the reporter’s transcript.
`
`We expect 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 the oral
`hearing, we should be notified via email communications no later than two
`(2) business days prior to the oral hearing.
`
`Lead counsel and back-up counsel may use portable computers in the
`hearing room at the counsel tables and at the hearing room lectern. The
`parties are reminded to direct any requests for specialized audio-visual
`equipment to Trials@uspto.gov. Requests for special equipment will not be
`honored unless presented in a separate communication directed to the above
`e-mail address not less than five (5) days before the oral arguments. If the
`request is not received timely, the equipment may not be available on the
`day of the oral arguments.
`
`ORDER
`It is ORDERED that oral arguments for these proceedings shall take
`
`place beginning at 1:00 PM Eastern Time, on Tuesday, January 10, 2017 at
`
`4
`
`
`
`IPR2016-00019
`IPR2016-00020
`Patent 6,510,434 B1
`
`the Madison Building East, 600 Dulany Street, ninth floor, Alexandria,
`Virginia.
`
`5
`
`
`
`PETITIONERS:
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, DC 20005
`IPRNotices@sidley com
`jmicallef@sidley.com
`
`Russell E. Cass
`SIDLEY AUSTIN LLP
`One South Dearborn Street
`Chicago, IL 60603
`rcass@sidley.com
`
`Erik J. Carlson
`SIDLEY AUSTIN LLP
`555 West Fifth Street
`40th Floor
`Los Angeles, CA 90013
`ecarlson@sidley.com
`
`Vernon M. Winters
`SIDLEY AUSTIN LLP
`555 California Street
`Suite 2000
`San Francisco, CA 94104
`vwinters@sidley.com
`
`
`
`
`
`IPR2016-00019
`IPR2016-00020
`Patent 6,510,434 B1
`
`
`PATENT OWNER:
`
`James P. Murphy
`Henry A. Petri, Jr.
`Q. Todd Dickinson
`POLSINELLI PC
`jpmurphy@polsinelli.com
`hpetri@polsinelli.com
`tdickinson@polsninelli.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`6
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