Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` IPR2016-00213, Paper 44
`IPR2016-00295, Paper 36
`Entered: February 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`FPUSA, LLC,
`Petitioner,
`
`v.
`
`M-I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00213 (Patent 9,004,288 B2)
`Case IPR2016-00295 (Patent 9,074,440 B2)
`____________
`
`
`Before JAMES A. TARTAL, CARL M. DEFRANCO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` IPR2016-00213, Paper 44
`IPR2016-00295, Paper 36
`Entered: February 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`FPUSA, LLC,
`Petitioner,
`
`v.
`
`M-I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00213 (Patent 9,004,288 B2)
`Case IPR2016-00295 (Patent 9,074,440 B2)
`____________
`
`
`Before JAMES A. TARTAL, CARL M. DEFRANCO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`
`Patent Owner requests an oral hearing pursuant to 37 C.F.R. § 42.70(a).
`
`IPR2016-00213, Paper 39; IPR2016-00295, Paper 31. Patent Owner’s requests are
`
`granted. Although the cases captioned above are not consolidated, the hearings
`
`will be held together and one transcript will be provided for both cases.
`
`The Scheduling Order in these cases set Due Date 7 as March 1, 2017.
`
`IPR2016-00213, Paper 15, 6; IPR2016-00295, Paper 10, 6. However, in an email
`
`to the Board dated February 10, 2017, Patent Owner requested postponement of
`
`the hearing in view of its pending motion to terminate these proceedings, which
`
`Patent Owner argues may eliminate the need for a hearing on the merits. See
`
`IPR2016-00213, Paper 42; IPR2016-00295, Paper 34. Patent Owner’s email
`
`indicated that Petitioner joins in the request to postpone the hearing. Consistent
`
`with the parties’ joint postponement request, the hearing will commence at
`
`1:00 PM ET, on April 24, 2017, on the ninth floor of Madison Building East,
`
`600 Dulany Street, Alexandria, Virginia. If either party has a conflict with this
`
`date it must notify the Board within three business days of entry of this Order.
`
`Petitioner is allotted 60 minutes of total argument time for both cases. Likewise,
`
`Patent Owner is allotted 60 minutes of total argument time for both cases.
`
`Petitioner bears the ultimate burden of proof that the claims at issue in these
`
`reviews are unpatentable. Therefore, at the hearing, Petitioner will proceed first to
`
`present arguments with regard to the challenged claims and grounds on which
`
`basis we instituted trial in these proceedings. Petitioner may reserve a portion of
`
`its argument time for rebuttal after Patent Owner has responded to Petitioner’s
`
`initial presentation. Thereafter, Patent Owner will argue its opposition to
`
`Petitioner’s case, having available to it the entirety of its allotted argument time.
`
`2
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`
`To the extent Petitioner reserves rebuttal time, Petitioner then may make use of its
`
`rebuttal time responding to Patent Owner.
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at least
`
`five business days before the hearing. The parties also 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 are directed to St. Jude Medical, Cardiology Division, Inc. v.
`
`The Board of Regents of the University of Michigan, IPR2013-00041 (PTAB
`
`Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of
`
`demonstrative exhibits. The parties shall meet and confer to discuss any objections
`
`to demonstrative exhibits at least three business days before the hearing. If any
`
`issues regarding demonstratives remain unresolved after the parties meet and
`
`confer, the parties shall file jointly a one-page list of objections to the
`
`demonstrative exhibits at least two business days before the hearing. For each
`
`objection, the list must identify with particularity the demonstratives subject to the
`
`objection and include a short, one-sentence statement explaining the objection. We
`
`will consider the objections and schedule a conference call if necessary.
`
`Otherwise, we will reserve ruling on the objections until the hearing or after the
`
`hearing. Any objection to demonstrative exhibits not presented timely will be
`
`considered waived. We take this opportunity to remind the parties that the
`
`demonstrative exhibits presented in these cases are not evidence and are intended
`
`only to assist the parties in presenting their oral argument to the panel.
`
`3
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`
`One or more members of the panel hearing this case will attend the hearing
`
`remotely via a videoconferencing device and will not be able to view the projection
`
`screen in the hearing room. Consequently, the presenter should identify clearly
`
`and specifically each demonstrative exhibit (e.g., by slide or screen number) or
`
`page of the record referenced during the hearing.
`
`We expect lead counsel for each party to be present in person at the hearing.
`
`Lead or backup counsel, however, may present the party’s argument. If either
`
`party anticipates that its lead counsel will not be attending the hearing, that party
`
`should initiate a joint telephone conference with the other party and the panel no
`
`later than two business days prior to the hearing to discuss the matter.
`
`We will provide a court reporter for the hearing and the reporter’s transcript
`
`will constitute the official record of the hearing. Each party shall provide a hard
`
`copy of their demonstratives to the court reporter at the hearing. Requests for
`
`audio-visual equipment will not be honored unless presented in a separate
`
`communication directed to Trials@uspto.gov not less than five days before the
`
`4
`
`hearing.
`
`
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`
`For PETITIONER:
`
`Brad Chin
`Brad.chin@bgllp.com
`
`Kevin Tamm
`Kevin.tamm@bgllp.com
`
`
`
`For PATENT OWNER:
`Barry Schindler
`Schlumberger-440-228-IPRs@gtlaw.com
`schindlerb@gtlaw.com
`
`
`
`Heath Briggs
`briggs@gtlaw.com
`
`
`5
`
`
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