Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 54
`
`
`
` Entered: March 17, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00360
`Patent 7,945,034 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and KIMBERLY
`McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`35 U.S.C. § 316(a)(10)
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 54
`
`
`
` Entered: March 17, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWILIO INC.,
`Petitioner,
`
`v.
`
`TELESIGN CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00360
`Patent 7,945,034 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and KIMBERLY
`McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`35 U.S.C. § 316(a)(10)
`
`
`
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`
` A Scheduling Order (Paper 19) was entered on June 28, 2016 setting
`the date for oral hearing as March 27, 2017, if hearing is requested by either
`party and granted by the Board. Both Petitioner and Patent Owner requested
`oral hearing pursuant to 37 C.F.R. § 42.70. See Papers 47, 48. The requests
`are GRANTED.
`The oral hearing will commence at 9:00 AM, on March 27, 2017.
`Each party will have a total of sixty minutes to present its arguments.
`Petitioner bears the ultimate burden of proof that the challenged claims are
`unpatentable. Therefore, Petitioner will proceed first to present its case as to
`the challenged claims and may reserve rebuttal time. Patent Owner then will
`argue its opposition to Petitioner’s case, and may argue its motion to exclude
`(Paper 50) and contingent motion to amend (Paper 28). Patent Owner may
`reserve time to rebut Petitioner’s opposition to the motion to exclude and
`contingent motion to amend. After that, Petitioner may use the rest of its
`time to respond to Patent Owner’s presentation on all matters. Finally, if
`Patent Owner reserves rebuttal time, Patent Owner may only address issues
`raised by Petitioner regarding Patent Owner’s motion to exclude and
`contingent motion to amend.
`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. In-person attendance will be accommodated on a first come, first
`serve basis. The Board will provide a court reporter for the oral hearing and
`the reporter’s transcript will constitute the official record of the oral hearing.
`
`2
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`
`Demonstrative exhibits shall be served on opposing counsel at least
`five business days before the hearing. The parties also shall file the
`demonstrative exhibits with the Board at least three business days prior to
`the hearing by emailing them to Trials@uspto.gov. Each party shall provide
`a hard copy of their demonstratives to the court reporter at the hearing. 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), for guidance regarding the appropriate
`content of demonstrative exhibits.
`We expect 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 may file any objections to demonstratives
`with the Board at least three business days before the hearing. The
`objections should identify with particularity which portions of the
`demonstrative exhibits are subject to objection, include a copy of the
`objected-to portions, and include a one-sentence statement of the reason for
`each objection. No argument or further explanation is permitted. We will
`consider any objections and schedule a conference call if deemed necessary.
`Otherwise, we will reserve ruling on the objections. Any objection to
`demonstrative exhibits that is not timely filed will be considered waived.
` The Board expects lead counsel for each party to be present at the
`oral hearing, although any backup counsel may present all or part of a
`party’s argument. If either lead counsel is unable to be present at the
`hearing, the Board shall be advised by email no later than two (2) business
`
`3
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`
`
`days prior to the oral hearing, and such lead counsel shall be available for a
`conference call if necessary.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Both parties have indicated that
`they desire to have audio-visual equipment available for use during the
`hearing. Formal requests for audio-visual equipment are to be made 5 days
`in advance of the hearing date. The request is to be sent to
`Trials@uspto.gov. If the request is not received timely, the equipment may
`not be available on the day of the hearing. 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.
`
`
`
`
`4
`
`
`
`IPR2016-00360
`Patent 7,945,034 B2
`
`FOR PETITIONER:
`Wayne Stacy
`wayne.stacy@bakerbotts.com
`
`Eliot D. Williams
`eliot.williams@bakerbotts.com
`
`Sarah J. Guske
`sarah.guske@bakerbotts.com
`
`
`
`
`
`FOR PATENT OWNER:
`
`Jesse Camacho
`JCAMACHO@shb.com
`
`Elena McFarland
`EMCFARLAND@shb.com
`
`Amy Foust
`AFOUST@shb.com
`TeleSignIPR@shb.com
`
`Mary J. Peal
`mpeal@shb.com
`
`5
`
`
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