Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 38
`
`Entered: July 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`____________
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`
`ORDER1
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 This Order addresses the same issue in the proceedings listed above.
`Therefore, we issue one Order to be filed in each proceeding. The parties,
`however, are not authorized to use this style of filing.
`
`
`571-272-7822
`
`
`
`Paper No. 38
`
`Entered: July 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AM GENERAL LLC,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`____________
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`
`ORDER1
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 This Order addresses the same issue in the proceedings listed above.
`Therefore, we issue one Order to be filed in each proceeding. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`
`
`Petitioner, AM General LLC, and Patent Owner, UUSI, LLC, each
`requested oral argument. Papers 34, 35.2 The requests are granted.
`Oral argument will commence at 9:00 AM ET on August 2, 2017.
`The hearing will be conducted on the ninth floor of Madison Building
`East, 600 Dulany Street, Alexandria, Virginia 22314. This single hearing
`will cover three proceedings: IPR2016-01049, IPR2016-01050, and
`IPR2016-01051.
`The hearing will be open to the public for in-person attendance, which
`will 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. For planning purposes, it is not
`required, but it would be greatly appreciated, if the parties could indicate to
`the Board by email to Trials@uspto.gov approximately how many people
`they expect to be present at the hearing for each side.
`Each party will have sixty (60) minutes of total argument time.
`Petitioner bears the ultimate burden of proof that the claims at issue in this
`review are unpatentable. Therefore, at oral hearing Petitioner will proceed
`first to present its case with regard to the challenged claims on which basis
`we instituted trial. Petitioner may reserve rebuttal time. Thereafter, Patent
`Owner will argue its opposition to Petitioner’s case. Petitioner may use any
`time Petitioner reserved to rebut Patent Owner’s opposition. Patent Owner
`may not reserve rebuttal time.
`
`
`2 We cite to the record in IPR2016-01049. Similar documents were filed in
`each of the three proceedings to which this Order applies.
`
`
`
`2
`
`
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`
`
`Specific requests for video equipment should be directed to
`Trials@uspto.gov at least five (5) days in advance of the hearing date. If
`the request is not received timely, the equipment may not be available on the
`day of the hearing. Questions regarding specific audio-visual equipment
`should be directed to the Board at (571) 272-9797.
`At least one member of the panel will be attending the hearing
`electronically from a remote location and may not be able to view the
`projection screen in the hearing room. Thus, if a demonstrative exhibit is
`not made available or visible to the judge(s) presiding over the hearing
`remotely, that demonstrative exhibit will not be helpful. Each 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 and for the benefit of the judge(s)
`presiding over the hearing remotely. A hard copy of the demonstratives
`should be provided to the court reporter at the hearing. Also, the parties are
`reminded that, at the oral argument, they “may rely upon evidence that has
`been previously submitted in the proceeding and may only present
`arguments relied upon in the papers previously submitted.” Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). “No
`new evidence or arguments may be presented at the oral argument.” Id.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served on
`opposing party seven (7) business days prior to the hearing. The Board
`expects 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 are directed to request a conference call with the Board
`
`
`
`3
`
`
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`
`no later than three (3) business days prior to the hearing 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 hearing to accommodate this requirement. Any objection to
`demonstrative exhibits that is not presented timely will be considered
`waived. The Board asks the parties to confine demonstrative exhibit
`objections to those identifying egregious violations that are prejudicial to the
`administration of justice. The parties may refer to CBS Interactive Inc. v.
`Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB October 23, 2013)
`(Paper 118), and St. Jude Medical, Cardiology Div., Inc. v. The Board of
`Regents of the University of Michigan, IPR2013-00041 (PTAB
`Jan. 27, 2014) (Paper 65) regarding the appropriate content of demonstrative
`exhibits. The parties are directed to file demonstrative exhibits two (2)
`business days prior to the hearing.
`The Board expects lead counsel for each party to be present in person
`at the oral 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 oral argument, the parties should request a joint telephone
`conference with the Board no later than two (2) business days prior to the
`oral hearing to discuss the matter.
`It is
`ORDERED that oral argument will commence at 9:00 AM ET on
`August 2, 2017.
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-01049 (U.S. Patent No. 5,570,666)
`IPR2016-01050 (U.S. Patent No. 6,148,258)
`IPR2016-01051 (U.S. Patent No. 5,729,456)
`
`PETITIONER:
`
`Nicole M. Jantzi
`Ian B. Brooks
`Paul M. Schoenhard
`ROPES & GRAY, LLP
`njantzi@mwe.com
`ibrooks@mwe.com
`pschoenhard@mwe.com
`
`
`PATENT OWNER:
`
`Jay Kesan
`Teresa Summers
`DIMURO GINSBERG PC
`jay@keyiplaw.com
`teresa@keyiplaw.com
`
`
`
`
`
`
`5
`
`
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