Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 17
`Entered: June 14, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`Case IPR2016-00921(Patent 7,814,598 B2)
`Case IPR2016-00922 (Patent 8,226,749 B2)1
`____________
`
`
`
`Before JOSIAH C. COCKS, MICHAEL J. FITZPATRICK, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to issue
`one Order to be docketed in each case. The parties are not authorized to use a
`multiple case caption.
`
`

`

`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`
`The Scheduling Orders for the above-captioned cases set July 12, 2017, as
`the date for oral hearings for Cases IPR2016-00921 and IPR2016-00922, if
`requested by the parties and granted by the Board. IPR2016-00921, Paper 7, 9;
`IPR2016-00922, Paper 7, 9.2 Petitioner and Patent Owner have requested a
`consolidated oral hearing for these cases. See IPR2016-00921, Papers 15 and 16.
`The parties’ requests for an oral hearing are granted.
`Each party has requested an hour to present its arguments for both cases.
`See IPR2016-00921, Papers 15, 1; IPR2016-00922, Paper 16, 1. Nevertheless,
`because there are a limited number of references and grounds asserted in each case,
`because of the similarities between the Specifications of each challenged patent,
`because of the similar constructions of the claim terms in each case, and because
`there are no additional motions currently filed in either case; a consolidated oral
`hearing will be heard, and each party will have a total of forty-five (45) minutes to
`present its arguments for both cases. In each case, because Petitioner bears the
`burden of persuasion on the instituted challenges, Petitioner will open the hearing
`by presenting its arguments regarding the challenged claims for which we
`instituted each review. Petitioner may reserve time for rebuttal arguments. Patent
`Owner then will respond to Petitioner’s arguments. Petitioner then may present
`rebuttal arguments during its reserved rebuttal time. To the extent that any
`argument or evidence shall apply only to one case, the party presenting that
`argument or evidence must make the limited applicability of its argument or
`evidence clear.
`The consolidated hearing for these cases will commence at 1:00 PM Eastern
`Time on July 12, 2017, on the ninth floor of the U.S. Patent and Trademark Office,
`
`
`2 Throughout the remainder of this Order, we cite to the papers filed in IPR2016-
`00921. The parties have filed similar papers in IPR2016-00922.
`
`
`
`2
`
`

`

`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`Madison Building East, 600 Dulany Street, Alexandria, Virginia. The hearing will
`be open to the public for in-person attendance, to be accommodated on a first-
`come, first-served basis. The Board will provide a court reporter for the hearing,
`and the reporter’s transcript will constitute the official record of the hearing.
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits for each case must
`be served no later than seven (7) business days before the hearing date. The
`demonstrative exhibits for each case shall be filed with the Board no later than the
`time of the hearing. Demonstrative exhibits are not evidence, but merely a
`visual aid at the hearing. Further, demonstrative exhibits shall not introduce
`new arguments or evidence, but instead, should cite only to arguments and
`evidence already in the record for these cases in which they are filed. 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.
`The parties should attempt in good faith to resolve any objections to
`demonstratives prior to involving the Board. The parties must initiate a conference
`call with the Board at least two (2) business days before the hearing to present any
`unresolved objection regarding the propriety of any demonstrative exhibit. Any
`unresolved objection to demonstrative exhibits that is not timely presented to the
`Board shall be deemed waived. Because the demonstrative exhibits are not
`evidence, may not present new arguments, and shall not be considered apart from
`arguments and evidence properly of record in these cases, the Board asks the
`parties to confine demonstrative exhibit objections to those identifying egregious
`violations that are prejudicial to the administration of justice. To aid in the
`preparation of an accurate transcript, each party shall provide paper copies of its
`
`
`
`3
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`

`

`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`demonstratives to the court reporter on the day of the oral hearing. Such paper
`copies shall not become part of the record of these cases.
`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 hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that one member of the panel
`will be attending the hearing electronically from a remote location and that, if any
`demonstrative is not made fully available or visible to all of the judges presiding
`over the hearing, that demonstrative will not be considered. Because of limitations
`of the audio transmission systems in our hearing rooms, the presenter may speak
`only when standing at the hearing room lectern. If the parties have questions as to
`whether demonstrative exhibits would be sufficiently available and visible to each
`panel member, the parties are invited to contact the Board at (571) 272-9797.
`The Board expects the lead counsel for each party to be present in person at
`the hearing. If a party anticipates that its lead counsel will not be attending the
`hearing, the parties should initiate a joint telephone conference with the Board no
`later than seven (7) business days prior to the hearing date to discuss the matter.
`Any counsel of record, however, may present a party’s arguments.
`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
`may not use such computers to make an audio or video recording of the hearing or
`to link to the Internet during the hearing or from the hearing room. The parties are
`reminded to direct their requests for special equipment, e.g., audio-visual
`equipment, or accommodations to Trials@uspto.gov. See Office Trial Practice
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Requests for special
`equipment or accommodations will not be honored unless presented in a separate
`
`
`
`4
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`

`

`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`communication directed to the above e-mail address not less than five (5) days
`before the oral hearing. If the request is not received timely, the equipment may
`not be available or accommodations may not be possible on the day of the hearing.
`Please note, however, that information projected in the hearing room in Alexandria
`may not be visible to the panel member participating in the hearing from the
`remote location.
`
`ORDER
`
`It is
`ORDERED that the hearing for these cases shall take place beginning at
`1:00 PM Eastern Time on July 12, 2017, on the ninth floor of the U.S. Patent and
`Trademark Office, Madison Building East, 600 Dulany Street, Alexandria,
`Virginia.
`
`
`
`
`
`
`5
`
`

`

`IPR2016-00921(Patent 7,814,598 B2)
`IPR2016-00922 (Patent 8,226,749 B2)
`
`PETITIONER:
`Mitchell G. Stockwell
`Vaibhav P. Kadaba
`Tiffany L. Williams
`KILPATRICK TOWNSEND & STOCKTON LLP
`mstockwell@kilpatricktownsend.com
`wkadaba@kilpatricktownsend.com
`tiwilliams@kilpatricktownsend.com
`
`PATENT OWNER:
`Christopher J. Renk
`Michael J. Harris
`BANNER & WITCOFF, LTD
`crenk@bannerwitcoff.com
`mharris@bannerwitcoff.com
`bwlitdocket@bannerwitcoff.com
`
`
`
`
`
`6
`
`