Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 54
`Entered: September 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`
`
`Case: IPR2016-012541
`Patent 8,457,113 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY and BARBARA A. PARVIS,
`Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On September 14, 2017, a conference call was held with Judges
`Medley and Parvis and counsel for the parties in attendance. Patent Owner
`
`
`1 This Order addresses the same issues in the inter partes reviews IPR2016-
`01254, -01257, -01259, -01261, -01262, and -01263, also listed in the
`Appendix. Therefore, we issue one Order to be filed in all of the cases. The
`parties, however, are not authorized to use this style of filing in subsequent
`papers.
`
`
`571.272.7822
`
`
`
`
`
`Paper 54
`Entered: September 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`
`
`Case: IPR2016-012541
`Patent 8,457,113 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY and BARBARA A. PARVIS,
`Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On September 14, 2017, a conference call was held with Judges
`Medley and Parvis and counsel for the parties in attendance. Patent Owner
`
`
`1 This Order addresses the same issues in the inter partes reviews IPR2016-
`01254, -01257, -01259, -01261, -01262, and -01263, also listed in the
`Appendix. Therefore, we issue one Order to be filed in all of the cases. The
`parties, however, are not authorized to use this style of filing in subsequent
`papers.
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`requested the conference call to raise objections to demonstrative slides filed
`by Petitioner Cisco Systems Inc. in IPR2016-01254 and -01257, and
`demonstrative slides filed by Petitioner Bright House Networks, LLC,
`WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch
`Communications (herein “Bright House Networks Group”) in IPR2016-
`01259, 01261, -01262, and -01263. During the call, Petitioners Cisco
`Systems Inc. and Bright House Networks Group indicated that Patent
`Owner’s slides are similar to their slides, so if we agree with Patent Owner,
`then in Petitioners’ view, Patent Owner’s slides are objectionable for the
`same reasons.
`Regarding the remaining proceedings, Patent Owner explained that it
`does not have objections to slides filed by Petitioner YMax Corporation in
`IPR2016-01256, -01258 and -01260 and is not aware of objections by
`Petitioner YMax Corporation to Patent Owner’s slides in these proceedings.
`Accordingly, this Order does not pertain to demonstrative exhibits filed in in
`IPR2016-01256, -01258 and -01260.
`We turn to Patent Owner’s objection to certain of Petitioners’ slides as
`including new annotations and, therefore, new argument. As an example,
`Patent Owner identified Petitioner Cisco Systems Inc.’s slide 38 in
`demonstrative slides for IPR2016-01254 and -01257. Patent Owner
`indicated that this slide includes new arrows highlighted in colors, which in
`Patent Owner’s view constitutes a new argument. Patent Owner further
`indicated that Bright House Networks Group similarly includes new
`annotations in certain of its demonstrative slides.
`Cisco Systems Inc. and Bright House Networks Group acknowledged
`that certain of their slides include annotations that are not provided in their
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`papers. Cisco Systems Inc. and Bright House Networks Group, however,
`argue that such annotations are not new argument, but instead useful in
`facilitating the presentation to the Board.
`During the call, we asked Cisco Systems Inc., Bright House Networks
`Group, and Patent Owner to provide input regarding possible remedies to
`this dispute, as follows: (1) we expunge demonstrative slides after the
`hearing; or (2) the parties present their arguments using only papers in the
`record and ELMO audio visual equipment, instead of demonstrative slides.
`Petitioners Cisco Systems Inc. and Bright House Networks Group generally
`favored the first remedy, whereas Patent Owner favored the second remedy.
`Cisco Systems Inc. argued that a judge participating remotely would benefit
`from demonstrative slides, but as no judge in this proceeding will be
`participating remotely, we need not consider further those arguments.
`As set forth in the guidance provided in the Order Granting the
`Parties’ Requests for an Oral Hearing in each of the proceedings (see, e.g.,
`IPR2016-01254, Paper 47), we have discretion to limit the parties’
`demonstratives to pages in the record should there be no easy resolution to
`objections over demonstratives. CBS Interactive Inc. v. Helferich Patent
`Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118).
`At this stage in the instant proceedings, nothing new can be presented, no
`new evidence, no new arguments. See Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
` We are not persuaded by Cisco Systems Inc. and Bright House
`Networks Group that their currently filed demonstrative slides present
`arguments consistently with the guidance given in the Orders Granting the
`Parties’ Requests for an Oral Hearing in each of the proceedings (see, e.g.,
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`IPR2016-01254, Paper 47). Cisco Systems Inc. and Bright House Networks
`Group acknowledged that their presentations include annotations not already
`present in the record. Based on the characterizations provided during the
`call, these modifications are not consistent with our guidance to the parties
`in preparing for the Oral Hearing. See, e.g., IPR2016-01254, Order
`Granting the Parties’ Requests for an Oral Hearing (Paper 47) (citing 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); CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-
`00033 (PTAB Oct. 23, 2013) (Paper 118)). Additionally, Patent Owner
`explained that its preference is that both parties’ restrict their presentation to
`papers in the record. Accordingly, we expunge both parties’ demonstrative
`slides in IPR2016-01254, -01257, -01259, 01261, -01262, and -01263.
`In light of the preferences of Cisco Systems Inc. and Bright House
`Networks Group to use demonstrative slides during the Oral Hearing, we
`allow the parties the opportunity to further meet and confer and, if the
`parties arrive at an agreement, the parties may re-file their demonstrative
`slides in IPR2016-01254, -01257, -01259, 01261, -01262, and -01263 on or
`before noon Eastern Monday September 18, 2017. If the parties elect to re-
`file their demonstrative exhibits, in light of the late re-filing of these
`demonstrative exhibits just one day prior to the Oral Hearing, we caution the
`parties that we may determine that the parties are not permitted to use their
`re-filed demonstrative slides, if further objections are raised. Therefore,
`even if the parties elect to re-file, the parties should be prepared to present
`their arguments at the Oral Hearing based on the papers in the record. As a
`further caution to the parties, if a party raises objections to demonstrative
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`slides during the Oral Hearing, that party should consider that time allocated
`toward arguing objections to a parties’ demonstratives may be counted
`against that party in total time allocated for oral argument, particularly if
`efforts have been made to remedy the objections previously raised.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, in each of IPR2016-01254, -01257, -01259, 01261,
`-01262, and -01263 Petitioner’s and Patent Owner’s demonstrative slides,
`set forth in the Appendix, shall be expunged without prejudice to Petitioner
`and Patent Owner revising and refiling their demonstrative exhibits on or
`before noon Monday September 18, 2019.
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`PETITIONERS:
`
`Wayne Stacy
`Sarah Guske
`BAKER BOTTS L.L.P.
`
`Patrick McPherson
`Christopher Tyson
`DUANE MORRIS LLP
`
`
`PATENT OWNER:
`
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`
`Victor Siber
`Hanna Madbak
`SIBER LAW LLP
`
`
`
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`
`
`
`
`
`
`
`
`APPENDIX2
`
`U.S. Patent
`No.
`
`Inter Partes
`Review
`
`Petitioner’s
`Demonstrative
`Exhibit No.
`
`7,764,777
`B2
`8,155,298
`B2
`8,457,113
`B2
`
`IPR2016-01262
`
`Ex. 1070
`
`IPR2016-01259
`IPR2016-01263
`IPR2016-01254
`IPR2016-01257
`IPR2016-01261
`
`Ex. 1168
`Ex. 1068
`Ex. 1060
`Ex. 1163
`Ex. 1070
`
`Patent
`Owner’s
`Demonstrative
`Exhibit No.
`Ex. 2072
`
`Ex. 2053
`Ex. 2053
`Ex. 2053
`Ex. 2072
`Ex. 2072
`
`
`2 Bright House Networks, LLC, WideOpenWest Finance, LLC, Knology of
`Florida, Inc., and Birch Communications are Petitioner in IPR2016-01259,
`01261, -01262, and -01263.
`
`YMax Corporation is Petitioner in IPR2016-01256, -01258 and -01260.
`Patent Owner has not objected to slides filed by Petitioner in these
`proceedings. Accordingly, no exhibits in these proceedings shall be
`expunged.
`
`Cisco Systems, Inc. is Petitioner in IPR2016-01254 and -01257.
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
